Attachment 3 IP Statements.docx

ATTACHMENT 3 - INTELLECTUAL PROPERTY STATEMENT/AGREEMENTS/DISCLOSURES

SUBMITTER STATEMENT

Each participant identified in a Company’s Solution Brief (to include sub-participants) shall complete the submitter statement below.

I, [insert submitter’s full name], of [insert full postal address], do hereby declare that the prototype(s), identified in the Solution Brief I have submitted is my own original work, or if submitted jointly with others, is the original work of the joint submitters.

I further declare that [check one]:

☐ I do not hold and do not intend to hold any patent or patent application with a claim which may cover the system prototype that I have submitted, known as [insert name of system];

OR [check one or both of the following]:

☐ to the best of my knowledge, the practice of the [insert name of system] that I have submitted, known as [insert name of system], may be covered by the following U.S. and/or foreign patents: [describe and enumerate or state “none” if applicable];

☐ I do hereby declare that, to the best of my knowledge, the following pending U.S. and/or foreign patent applications may cover the practice of my submitted [insert name of system] [describe and enumerate or state “none” if applicable].

I certify that, to the best of my knowledge, I have fully disclosed all patents and patent applications, which may cover my [insert name of system].

I do hereby agree to provide the statements required in the Patent Owner(s) Statement and Reference Owner(s) Statement, below, for any patent or patent application identified to cover the practice of my [insert name of system] and the right to use such for the purposes of the evaluation process.

Signature (electronic signature is acceptable)

PATENT OWNER(S) STATEMENT

Each participant identified in a Company’s Solution Brief (to include sub-participants) shall complete the Patent Owner(s) statement below.

If there are any patents (or patent applications) identified by the submitter, including those held by the submitter, the following statement must be signed by each owner, or each owner’s authorized representative, of each patent and patent application identified.

I, [insert full name], of [insert full postal address], am the owner or authorized representative of the owner [print full name, if different than the signer] of the following patent(s) and/or patent application(s): [enumerate], and do hereby commit and agree to grant to any interested party on a worldwide basis, if the system known as [insert name of system]is selected for the DoD prototype, in consideration of its evaluation and selection, a non-exclusive license for the purpose of implementing standards or algorithms [check one]:

☐ without compensation and under reasonable terms and conditions that are demonstrably free of any unfair discrimination, OR

☐ under reasonable terms and conditions (to be identified, if selected, in the Phase 2 Pitch Session) that are demonstrably free of any unfair discrimination.

I further do hereby commit and agree to license such party on the same basis with respect to any other patent application or patent hereafter granted to me, or owned or controlled by me, that is or may be necessary for the purpose of evaluating the proposed system prototype. Any future follow-on Production Contract could/will require re-negotiated terms and conditions.

I further do hereby commit and agree that I will include, in any documents transferring ownership of each patent and patent application, provisions to ensure that the commitments and assurances made by me are binding on the transferee and any future transferee.

I further do hereby commit and agree that these commitments and assurances are intended by me to be binding on successors-in-interest of each patent and patent application, regardless of whether such provisions are included in the relevant transfer documents.

I further do hereby grant to the U.S. Government, during the evaluation process, and during the lifetime of the standard, a nonexclusive, non-transferrable, irrevocable, paid-up worldwide license solely for the purpose of modifying my submitted system’s specifications (e.g., to protect against a newly discovered vulnerability) for incorporation into the prototype efforts.

Signature

REFERENCE OWNER(S) STATEMENT

Each participant identified in a Company’s Solution Brief (to include sub-participants) shall complete the Reference Statement below.

I, [insert full name], [insert full postal address], am the owner or authorized representative of the owner [insert full name, if different than the signer] of the submitted reference [insert name of process] specifications and hereby grant the U.S. Government and any interested party the right to reproduce, prepare derivative works based upon, distribute copies of, and display such implementations for the purposes of the [insert name of process] process, and if the corresponding [insert system name] is selected for Fangorn prototype, notwithstanding that the implementations may be copyrighted or copyrightable.

Signature

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