Attachment 10 - Special Licensing Agreement SAMPLE.docx

Attachment 10 – SLA for CTSO INC1 Solicitation Number W15QKN-21-R-0JKH

SPECIAL LICENSE AGREEMENT

FOR

Close Terrain Shaping Obstacle (CTSO) Increment 1

This Special License Agreement (“Agreement”) is between the U.S. Government, through the Army Contracting Command – Picatinny Arsenal, NJ (hereinafter referred to as “GOVERNMENT”), and [INSERT] (“LICENSOR”) (collectively, the “Parties”). This Agreement will be executed by both LICENSOR and GOVERNMENT and is integrated into and made a part of Other Transaction Agreement No. W15QKN-22-9-XXXX (the “OTA”).

WHEREAS, LICENSOR submits this specially negotiated license agreement (SLA) with its proposal in response to Prototype Project Opportunity Notice issued on date (“PPON”); and

WHEREAS, LICENSOR has developed Data relating to the Close Terrain Shaping Obstacle Increment 1 (“CTSO-INC1”); and

WHEREAS, LICENSOR enters into this specially negotiated license agreement to grant the Government Specially Negotiated License Rights in such Data; and

WHEREAS, the Government states that it is authorized by law including Title 10 of the U.S. Code Section 2386, P.L. 94-361 (Feb. 10, 1996) to enter into this Agreement.

NOW, THEREFORE, in consideration of the foregoing and the mutual covenants, promises and conditions set forth herein, LICENSOR and the Government hereby agree to the following:

ARTICLE 1- DEFINITIONS

1.1 “Data” means commercial or non-commercial computer software, computer software documentation as defined in DFARS 252.227-7014 and technical data as defined in DFARS 252.227-7013 (Feb. 2014).

1.2 “Effective Date” means the date on which the last executing signature on this Agreement has been executed by a duly authorized official of LICENSOR or Government.

1.3 “Government Purpose” means any activity in which the United States Government is a party, including cooperative agreements with international cooperative agreement with international or multi-national defense organizations, or sales or transfers by the United States Government to foreign governments or international organizations (e.g. FMS). Government purposes include competitive procurement, but do not include the rights to use, modify, reproduce, release, perform, display, or disclose technical data for commercial purposes or authorize others to do so.

1.4 “Government Purpose Rights” means the rights to (i) use, modify, reproduce, release, perform, display, or disclose Data within the Government without restrictions; (ii) release or disclose Data outside the Government and authorize persons to whom release or disclosure has been made to use, modify, reproduce, release, perform, display or disclose that Data for Government Purpose(s); and (iii) to practice, or have practiced for or on the Government’s behalf, patents and patent applications covering the CTSO-INC1 throughout the world including those patents and applications as identified in Appendix A.

1.5 “Government Data” means Data the Government has developed independent from the OTA or the OTA’s Follow-on Award.

1.6 “Limited Rights” means those rights as defined under DFARS 252.227-7013(a)(14) (Feb 2014).

1.7 “Restricted Rights” means those rights as defined under DFARS 252.227-7014(a)(15) (Feb. 2014).

1.8 “CTSO-INC1” means the Close Terrain Shaping Obstacle- Increment 1 configuration delivered under OTA W15QKN-21-R-0JKH or OTA’s Follow-On Award.

1.9 “CTSO-INC1 Data” means LICENSOR’S Data that is either embodied in the CTSO-INC1 or delivered under the OTA or an OTA’s Follow-on Award. CTSO INC1 data includes software including but not limited to the Top Attack munitions, the munition launcher, Remote Control Station (RCS), the Terrain Shaping Obstacle (TSO) obstacle planning and management tool and authoritative safety information (see SOW paragraph 4.1.2.1, CTSO INC1 System Software). CTSO-INC1 Data does not include the Government’s Data.

1.10 “OTA’s Follow-on Award” means the follow-on production contract or agreement to the OTA as authorized under 10 U.S.C. §2371b(f).

1.11 “Specially Negotiated License Rights” means those rights described in DFARS 252.227-7013(b)(4)(Feb. 2014) and specifically defined in this Agreement.

1.12 “Unlimited Rights” means the rights to use, modify, reproduce, perform, display, release or disclose Data in whole or in part, in any manner, and for any purpose whatsoever, and to have or authorize others to do so.

ARTICLE 2 – LICENSE TERM

2.1 The term of this Agreement is effective upon the Effective Date and shall continue until terminated or revoked. The term for specific license grants shall begin on the dates provided under Article 3.

ARTICLE 3 – GRANTS AND CONVENANTS

3.1 Government Purpose Rights: Effective upon ordering 723 Dispensor Launcher Modules (DLM) with the LICENSOR or notice under Article 7.2 is given, the GOVERNMENT is hereby granted a non-exclusive, non-transferable, irrevocable, fully paid-up, royalty-free license for Government Purpose Rights to CTSO-INC1 Data. GOVERNMENT agrees that it shall require any third-party to first execute a non-disclosure agreement that is consistent with the non-disclosure provisions under DFARS 227.7103-7 prior to releasing or disclosing any CTSO-INC1 Data to such third party.

3.2 Unlimited Rights:

a. On the date that is [Insert Time Period] from the Effective Date, the GOVERNMENT’s obligations under Articles 3.1 and 7.1 shall cease and the GOVERNMENT shall have Unlimited Rights to the CTSO-INC1 Data.

b. LICENSOR affirms that on the Effective Date, the GOVERNMENT has been granted Unlimited Rights to CTSO-INC1 Data under DFARS 252.227-7013(b)(1) and DFARS 252.227-7014(b)(1).

3.3 Limited Rights: LICENSOR affirms that on the Effective Date, the GOVERNMENT is granted Limited Rights to the CTSO-INC1 Data unless greater rights have been granted under this Agreement.

3.4 Restricted Rights: LICENSOR affirms that on the Effective Date, the GOVERNMENT is granted Restricted Rights to the CTSO-INC1 Data unless greater rights have been granted under this Agreement.

3.5 LICENSOR agrees that it will not assert trademark infringement claim(s) against the GOVERNMENT or others authorized by the GOVERNMENT to use any marks or designations containing “XM” or “M” followed by any combination of numbers or letters, or words to identify or designate the CTSO-INC1.

ARTICLE 4 - PROPERTY RIGHTS

4.1. All licensed intellectual property rights granted by LICENSOR under this Agreement are proprietary to LICENSOR and title thereto remains with it.

4.2. Information shall not be considered proprietary under this Agreement and GOVERNMENT shall not be required to protect such information:

a. that is legally in the possession of GOVERNMENT or GOVERNMENT’s recipients, or their employees or contractors, prior to their date of receipt hereunder and is not subject to restriction on disclosure or use;

b. that enters the public domain at any time through no fault of GOVERNMENT or GOVERNMENT’s recipients, or their employees or contractors; or

c. that is received from a third party operating without any limitations on disclosure or use, or without breach of this Agreement and without inducement of such party by GOVERNMENT or GOVERNMENT’s recipients to breach any agreement or obligation of confidentiality.

4.3 No rights are granted herein to Government Data. Any rights granted to use, modification, reproduction, release, perform, display or disclose Government Data or Government furnished equipment shall be stated expressly in writing.

ARTICLE 5 – REPRESENTATIONS AND WARRANTIES

5.1 LICENSOR represents and warrants and subject to the disclosure in Appendix B,

a. the Data or intellectual property information covered by the licenses granted herein does not, to LICENSOR’s knowledge, infringe any third-party rights;

b. the rights granted herein are not subject to any liens, encumbrances or third-party license rights inconsistent with this Agreement; and

c. LICENSOR has full and sufficient right, title and authority to grant the rights and/or license to the GOVERNMENT under this Agreement.

ARTICLE 6 - BREACH, LAPSE, AND TERMINATION

6.1 Breach by GOVERNMENT: If LICENSOR believes there has been a non-compliant disclosure of its proprietary data by the GOVERNMENT, LICENSOR shall serve notice of such disclosure to the GOVERNMENT. The GOVERNMENT shall promptly use its best efforts to remedy the violation within 60 days after such notice.

The Government shall not be considered in breach of this Agreement by releasing proprietary information to courts as a result of operation of law, regulation, or court order requiring that it be so disclosed, provided however that all reasonable steps are taken to restrict further disclosure of the affected information by said authorities or court and information so disclosed is not otherwise removed from these confidentiality obligations. The Government shall give advance written notice to LICENSOR prior to any release under this paragraph. Such notification will not prevent the Government from complying with the aforementioned direction or order of any governmental authority.

6.2 Breach by LICENSOR: LICENSOR agrees that its failure to perform with respect to the promises identified in the OTA’s Follow-on Award shall result in immediate delivery of the Data upon the GOVERNMENT’s notice to LICENSOR under FAR, Part 49, and LICENSOR’s failure to cure such breach within 60 days of the notice.

6.3 Dispute Procedures: Unless specifically provided herein any dispute regarding breach of this Agreement shall be controlled by the dispute clauses of the OTA’s Follow-on Award.

6.4 Survival: The Provisions of Article 4, Article 5 and Article 6 shall survive termination of this Agreement.

a. All LICENSOR’s Data subject to less than unlimited rights shall be marked with the following legend:

SPECIAL LICENSE RIGHTS

The Government’s rights to use, modify, reproduce, release, perform, display, or disclose these data are restricted by Contract No. __________and Special License Agreement dated _________. Any reproduction of technical data, computer software, or computer software documentation or portions thereof marked with this legend must also reproduce the markings.

b. In addition, all copies of materials containing CTSO-INC1 Data shall be marked with the following distribution statement in accordance with DODI 5230.24 (August 23, 2012).

DISTRIBUTION STATEMENT D

Distribution authorized to Department of Defense and U.S. DoD contractors only; Reason: Proprietary Information, (Date of Determination). Other requests for this document shall be referred to (insert controlling office)

c. In addition, all copies of materials containing CTSO-INC1 Data shall be marked with the following Export Control marking.

EXPORT CONTROL WARNING NOTICE

This document contains technical data whose export is restricted by the Arms Export Control Act (Title 22, U.S.C., Sec 2751, et seq.) or the Export Administration Act of 1979, as amended, (Title 50, U.S.C., App 2401 et seq.). Violations of these export laws are subject to severe criminal penalties. Disseminate in accordance with provisions of DOD Directive 5230.25.

ARTICLE 8 – MISCELLANEOUS

8.1 Waiver of Rights: The failure of either party hereto at any time to enforce any of the terms, provisions, or conditions of this Agreement shall not be construed as a waiver of the same or of the right of either party to enforce the same on any subsequent occasion.

8.2 Severability: If any provision of this Agreement shall be deemed unenforceable, it shall be deemed severed from the remainder of the Agreement, which shall otherwise remain in full force and effect.

ARTICLE 9 – POINTS OF CONTACT

For LICENSOR:

For U.S. ARMY:

THIS AGREEMENT MAY BE EXECUTED IN ANY NUMBER OF COUNTERPARTS EACH OF WHICH WHEN EXECUTED AND DELIVERED SHALL CONSTITUTE A DUPLICATE ORIGINAL, BUT ALL COUNTERPARTS TOGETHER SHALL CONSTITUTE A SINGLE AGREEMENT.

IN WITNESS WHEREOF, THE PARTIES DO HEREBY ACCEPT AND EXECUTE THIS AGREEMENT.

For LICENSOR:

For U.S. GOVERNMENT:

Name (typed)

Name (typed)

Title:

Title:

Date:

Date:

APPENDIX A

(Patents/Applications)

APPENDIX B

(Reps and Warranty Exclusions)

OFFEROR TO COMPLETE