Cooperative Research & Development Agreement

COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENT
FOR A PROJECT BETWEEN THE U.S. GEOLOGICAL
SURVEY AND ONE COLLABORATOR


GENERAL PROVISIONS


This Cooperative Research and Development Agreement ("CRADA") is entered into by and between Chicago Map Corporation ("the Collaborator"), and the National Mapping Division of the United States Geological Survey ("USGS"). The parties agree as follows:


ARTICLE 1. DEFINITIONS


1.1 The term "Cooperative Research and Development Agreement" (CRADA) means the
document describing research activities that are jointly undertaken by the
USGS and one or more non-Federal parties that have entered into a CRADA
with USGS for that purpose.


1.2 The term "Invention" means any invention or discovery which is or may be
patentable under Title 35 of the United States Code.


1.3 The term "made" in relation to any invention means the conception or first
actual reduction to practice of such invention.


1.4 The term "Proprietary Information" means information which embodies trade
secrets developed at private expense outside of this CRADA or which is
confidential technical, business, or financial information provided that
such information:


(i) Is not generally known or available from other sources without
obligations concerning its confidentiality;


(ii) Has not been made available by the owners to others without
obligation concerning its confidentiality; and


(iii) Is not already available to the Government without obligation
concerning its confidentiality.


1.5 The term "Subject Data" means all recorded information first produced in
the performance of this CRADA.


1.6 The term "Subject Invention" means any invention of the Collaborator or
USGS conceived or first actually reduced to practice in the performance of
work under this CRADA.


1.7 The term "Intellectual Property" means patents, trademarks, copyrights,
trade secrets, mask works and other forms of comparable property
protectable by Federal, State, or foreign laws. 2


1.8 The term "Background Intellectual Property" (BIP) refers to a patent or
patent application covering an invention or discovery of either party, or a
copyrighted work, a mask work, trade secret or trademark developed with
separate funds outside of the CRADA by one of the parties or with others.
BIP is not considered as a Subject Invention.


1.9 The term "Created" in relation to any copyrightable software work means
when the work is fixed in any tangible medium of expression for the first
time, as provided for at 17 U.S.C. 101.


1.10 The term "Generated Information" means information produced in the
performance of the CRADA.


1.11 The term "Protected CRADA Information" means Generated Information which is
marked as being Protected CRADA Information by a party to this agreement
and which would have been Proprietary Information had it been obtained from
a non-Federal entity.


1.12 The term "Collaborator's Assigned Employees" means those employees of the
Collaborator who are present at USGS facilities for a continuous period of
more than 2 weeks.


ARTICLE 2. STATEMENT OF WORK


Cooperative research performed under this CRADA shall be performed in accordance with the Statement of Work attached hereto as pages 2 through 11. Any modification to this initial scope shall be made by mutual agreement between the Collaborator and USGS and shall be incorporated herein by a formally executed written amendment to this CRADA as per Article 12.5.


ARTICLE 3. FINANCIAL OBLIGATION


3.1 The term of the joint project is from March 15, 1999 to March 15, 2004. The
Collaborator's total contribution is estimated at $ 7,550,000. Of the total
stated above, $ 0 is direct contribution to the USGS and $ 7,550,000 is
in-kind services and resources. Method and scheduling of payment for
current and subsequent years is included on cover attachment 9-2040 or will
be provided annually by amendment to the CRADA General Provisions.


3.2 The contribution of USGS shall be in the form of labor, equipment,
facilities, information, and/or computer software estimated $ 4,000,000
subject to available funding.


3.3 Royalty payments, when required, shall be made by the Collaborator to USGS
in accordance with provisions of Articles 4.6 and 6.1. All payments by the
Collaborator shall be made payable to the United States Geological Survey
and mailed to the following address: 3
U.S. Geological Survey
Office of Financial Management
271 National Center
12201 Sunrise Valley Drive
Reston, Virginia 20192


ARTICLE 4. PATENT RIGHTS


4.1 Reporting. The parties agree to disclose to each other every Subject
Invention, which may be patentable or otherwise protectable, within 60 days
of the time that an inventing party reports such invention to the person(s)
responsible for patent matters in the inventing organization. These
disclosures should be in sufficient enough detail to enable a reviewer to
make and use the invention under 35 U.S.C. 112. The disclosure shall also
identify any statutory bars, i.e., printed publications describing the
invention or public use or sale of the invention in this country. The
parties further agree to disclose to each other any subsequent statutory
bar that occurs for an invention disclosed but for which a patent
application has not been filed. All invention disclosures shall be marked
as confidential under 35 U.S.C. 205.


4.2 Collaborator Employee Inventions. USGS, on behalf of the U.S. Government,
waives any ownership rights the U.S. Government may have in Subject
Inventions made by the Collaborator's employees under the Agreement and
agrees that the Collaborator shall have the option to retain title to any
such employee Subject Invention. The Collaborator shall promptly notify
USGS upon making this election and agrees to file patent applications on
such Subject Invention at its own expense and in a timely fashion. The
Collaborator agrees to grant to the U.S. Government on its employee's
Subject Inventions a nonexclusive, irrevocable, paid-up license in the
patents covering a Subject Invention to practice or have practiced,
throughout the world by, or on behalf of the U.S. Government. Such
nonexclusive license shall be evidenced by a confirmatory license agreement
prepared by the Collaborator in a form satisfactory to USGS. (See Article
4.4)


4.3 USGS Employee Inventions.


4.3.1 USGS, on behalf of the U.S. Government, shall have the initial option
to retain title to each Subject Invention made by its employees under
this Agreement. If an invention is made jointly by personnel of both
parties under this Agreement, it and all patent applications and/or
patents issued thereon shall be jointly owned by the parties, and
available for use and licensing without obligation to account to the
other party, subject to the obligations contained in Articles 4, 7,
and 9. USGS may release the rights provided for by this Article to
employee inventors or to the Collaborator subject to a license in
USGS (See Article 4.4).


4.3.2 If the USGS agrees to grant, convey, and assign the entire title to
any invention made under this agreement to the Collaborator for less
than the fair market value of the invention or the portion conveyed,
and if the inventor is an employee of the U.S. Government at the time
the invention is made or any portion thereof, then the USGS and the
Collaborator shall mutually agree with respect to an appropriate


4


sum of monies to be given as fair compensation to the government
employee. This agreement shall be reached before such conveyance is
consummated. Compensation agreements shall be made in accordance with
the Federal Technology Act of 1986 and Executive Order 12591 dated
April 10, 1987.


4.4 Filing of Patent Applications. The party having the right to retain
title and file patent applications on a specific Subject Invention may
elect not to file patent applications thereon provided that it so
advises the other party within 90 days from the date it reports the
Subject Invention to the other party. Thereafter, the other party may
elect to file patent applications on the Subject Invention and the
party initially reporting such Subject Invention agrees to assign its
right title and interest in such Subject Invention to the other party
and cooperate with such party in the preparation and filing of patent
applications thereon. The assignment of the entire right title and
interest to the party pursuant to this Article shall be subject to the
retention by the party assigning title of a nonexclusive, irrevocable,
paid-up license to practice, or have practiced, the Subject Invention
throughout the world. In the event that neither of the parties to this
agreement elect to file a patent application on subject invention,
either or both (if a joint invention) may, at their sole discretion
and subject to reasonable conditions, release the right to file to the
inventor(s) with a license in each party of the same scope as set
forth in the immediate preceding sentence.


4.5 Patent Expenses. All of the expenses attendant to the filing of the
patent applications as specified in 4.4 above, shall be borne by the
party filing the patent application. Any post filing and post patent
fees shall also be borne by the same party. Each party shall provide
the other party with copies of the patent applications it files on any
Subject Invention along with the power to inspect and make copies of
all documents retained in the official patent application files by the
applicable patent office.


4.6 License Provisions. If requested, the USGS agrees to negotiate with
the Collaborator for an exclusive license to sole or jointly developed
inventions in the following identified field of use: GIS and
visualization activities related to this CRADA. Any such license shall
be negotiated independently from the CRADA and shall include
reasonable commercial terms. The collaborator's right to negotiate a
license(s) begins at the time that an invention disclosure is filed
and ceases 6 months after the termination of this CRADA for all
subject inventions.


ARTICLE 5. COPYRIGHTS


5.1 Reporting. The parties agree to disclose to each other every
copyrightable article of software (including modifications and
enhancement thereto), documentation or other works created in whole or
in part under this CRADA, which is subject to being copyrighted under
Title 17, United States Code.


5.2 Collaborator Option. The Collaborator shall have the option, solely at
its own discretion, as to whether it wishes to incorporate any
copyrightable article 5


pursuant to Article 5.1, and developed in whole or in part by USGS,
into any commercial product(s) resulting from the efforts of this
CRADA.


5.3 The Collaborator shall have the option to own the copyright in all
software (including modifications and enhancement thereto),
documentation, or other works created in whole or in part by the
Collaborator under this CRADA, which is subject to being copyrighted
under Title 17, United States Code. The Collaborator shall mark any
such works with a copyright notice showing the Collaborator as the
author or co-author and shall in its reasonable discretion determine
whether to file applications for registration of copyright.


5.4 The Collaborator agrees to grant to the U.S. Government, solely for
U.S. Government purposes, a nonexclusive, irrevocable, paid-up, ...