Agreement to License Pecan Street Research Institute Proprietary Energy Information

  • Background

  • 1. The Institute has extensive expertise in the creation and development of technical information, ideas, and concepts relating to the electric smart grid industry including consulting, pricing, marketing, and implementation and system designs for such systems, including without limitation, usage data, copyrights, trade secrets, plans, source codes, object codes, prototypes, working models, and production models (the “Confidential Information”).

  • 2. Covenantor desires to enter or has entered into a business relationship with the Institute and has requested that it review the Confidential Information in conjunction with the Accepted Uses as described herein.

  • 3. “Accepted Uses” include the use of the Confidential Information for university classroom teaching, in furtherance of research affiliated with an accredited university, in academic presentations, or to familiarize the Covenantor with Institute research data for subsequent dealings. Accepted Uses of the Confidential Information expressly exclude the use of the Confidential Information in furtherance of any commercial product or service, or disclosing the Confidential Information to any third party.

  • 4. The Institute will be furnishing to Covenantor information and/or other materials, in writing, orally, and in other tangible form, regarding the results of research performed by the Institute and/or agents of the Institute. Such information, in whole or in part, shall be considered Confidential Information. Any analyses, compilations, studies, or other documents prepared by the Covenantor, the Covenantor’s agents, or employees, which contain or otherwise reflect such information and Covenantor’s review or interest in the Institute, shall be considered “Derivative Materials.”

  • 5. The Confidential Information of the Institute is proprietary, secret, and confidential and is only being disclosed to Covenantor in conjunction with the Institute’s business relationship or potential business relationship with Covenantor and for no other reason.

    NOW THEREFORE, in consideration of the mutual covenants herein contained, the parties intending to be legally bound, agree as follows:

  • 1. The Institute shall disclose to Covenantor such Confidential Information as the Institute deems appropriate. The nature of the Confidential Information to be disclosed is as follows:

  • 2. Subject to the terms and conditions described herein, the Covenantor shall receive an irrevocable, non-transferable license to use the Confidential Information for the Acceptable Uses.

  • 3. Covenantor shall review and maintain the Confidential Information in accordance with the following terms and conditions:

    1. A) Except for the agreed-to disclosures specified as Acceptable Uses and Derivative Materials, Covenantor agrees to treat all Confidential Information (as defined above) as confidential and not to disclose the same to any third party. Covenantor hereby agrees that its rights as related to the Confidential Information are non-assignable and non-transferable.

    2. B) The documents containing such information should be designated as “Confidential” or “Proprietary” and shall be so marked by the Institute provided, however, that all data provided to Covenantor hereunder shall be deemed to be proprietary and confidential regardless of whether it is marked “Confidential” or “Proprietary”.

    3. C) No copies of the Confidential Information shall be made, unless agreed to in writing by the Institute.

    4. D) All of the Confidential Information shall be kept and maintained in a safe and secure place with adequate safeguards to insure that unauthorized persons do not have access to the Confidential Information. Covenantor shall, at all times, keep the Institute informed in writing of the location of the Confidential Information.

    5. E) Only representatives of Covenantor whose review of the Confidential Information is necessary and appropriate for the purposes set forth in Paragraphs 2 and 3 of the Background above shall have access to the Confidential Information. The Confidential Information shall be used solely by Covenantor for the limited purpose stated in Paragraphs 2 and 3 of the Background above.

    6. F) Any oral discussions between the Institute and Covenantor that relate to the Confidential Information shall be kept secret and confidential and are deemed to be Confidential Information.

    7. G) Upon the request of the Institute or after the termination of this Agreement, Covenantor shall promptly return or destroy all of the Confidential Information. Covenantor shall certify that all Confidential Information and copies or extracts thereof have been returned or destroyed.

    8. H) Covenantor agrees to immediately notify the Institute in writing of any misuse or misappropriation of the Confidential Information or violation of this Agreement that may come to its attention.

    9. I) Covenantor hereby agrees to use the Confidential Information only for Acceptable Uses defined herein, including the ability to create any Derivative Materials based on the Confidential Information. Covenantor hereby agrees that it will not resell or reuse the Confidential Information for any service of any kind.

    10. J) Covenantor hereby acknowledges that the Confidential Information is a trade secret of the Institute, and agrees to keep the information so as to protect the trade secret. Any works created by Covenantor while using the Confidential Information shall not disclose or in any way abrogate the trade secrets contained in the Confidential Information.

    11. K) To the extent the Confidential Information contains any personally identifiable information on participants in the Institute’s various research programs, Covenantor hereby agrees that it will comply with all applicable laws regarding protection of personally identifiable information, and will in any event use the same standard of care that the Covenantor uses to protect its own confidential information, and in no event will use less than a reasonable standard of care. Covenantor agrees to indemnify and hold harmless the Institute against any causes of action arising out of Covenantor’s use or misuse of personally identifiable information.

  • 4. Except for the agreed-to disclosures specified as an Acceptable Use, Covenantor, its agents, employees, representatives, subsidiaries, affiliated, or parent companies shall not, for themselves or for the benefit of any person or entity, other than the Institute, use, or disclose the Confidential Information whether written or oral, software technology, or otherwise or any portion thereof, for any purpose, at any time or in any place, without the express prior written approval of the Institute.

  • 5. Covenantor and Pecan Street shall handle the public disclosure of materials prepared by Covenantor using the Confidential Materials ("Derivative Materials") in the following manner:

    1. A) Covenantor hereby agrees to furnish to the Institute copies of any Derivative Materials that it intends to make public. The Institute reserves the right to make a timely objection to the disclosure of the Derivative Materials, provided the Institute has a good faith belief that the scope of the Acceptable Uses. In the event the Institute makes an objection, the Covenantor and the Institute will meet in good faith to negotiate the release of the Derivative Materials and/or any necessary revisions to the Derivative Materials. In no event shall the Derivative Materials be released while the Institute has a pending objection.

    2. B) In no event shall the Derivative Materials be released or disclosed to any third party while Pecan Street has a pending objection.

    3. C) Covenantor hereby agrees to prominently attribute “Pecan Street Research Institute” in the Derivative Materials as the supplier of the underlying data. Such attribution includes placing visibly the attribution “Source: Pecan Street Research Institute” immediately next to, and on the same page or screen as, any graphics developed in whole or in part through access to the Confidential Information.

    4. C) Covenantor hereby grants Pecan Street a worldwide, irrevocable, royalty-free license to use any Derivative Materials in the following manner:

      1. i) Pecan Street may furnish copies of the Derivative Materials to members of the research consortium associated with Pecan Street, the Pecan Street Research Institute.

      2. ii) Pecan Street may furnish copies of the Derivative Materials to members of its Industry Advisory Counsel.

      3. iii) Pecan Street may utilize the Derivative Materials in the creation of additional proprietary materials which shall be the sole property of Pecan Street. Covenantor agrees that it does not acquire any title, ownership, or other intellectual property right or license under this Agreement to materials created by Pecan Street based on or derived from the Derivative Materials.

  • 6. Notwithstanding anything to the contrary herein, Covenantor shall have no obligation to preserve the confidentiality of any information that:

    1. A) Was previously known to Covenantor free of any obligation to keep it confidential as shown by the Covenantor’s written records, so long as the Covenantor did not receive such information directly or indirectly from the Institute; or

    2. B) Is or becomes publicly available, by other than unauthorized disclosure; or

    3. C) Other than for patents, is independently developed by Covenantor without knowledge of the Confidential Information as shown by the Covenantor’s written records; or

    4. D) Is disclosed to third parties by the Institute without restriction; or

    5. E) Is lawfully received by Covenantor from a third party whose disclosure would not violate any confidentiality or other legal obligation.

  • 7. No liability shall arise under this Agreement due to the Covenantor’s disclosure of Confidential Information made pursuant to judicial or governmental order, provided the Covenantor notifies the Institute as soon as possible and in any event prior to such disclosure and cooperates with the the Institute in the event the the Institute elects to legally contest and avoid such disclosure.

  • 8. Covenantor agrees that it does not acquire any title, ownership, or other intellectual property right or license under this Agreement.

  • 9. The obligations of this Agreement with respect to the disclosure of Confidential Information shall survive for a period of five (5) years from the date of last disclosure or for as long as the Institute is commercially marketing the Confidential Information, whichever is longer.

  • 10. Covenantor recognizes and agrees that its obligations under Sections 2, 3, 4, 9, and 10 of this Agreement shall survive the termination of this Agreement and Covenantor shall be bound by such obligations after termination hereof.

  • 11. This Agreement may be terminated by either party upon thirty (30) days prior written notice provided, however, that this Agreement may be terminated immediately and the return of all Confidential Information may be demanded by the Institute upon written notice in the event that Covenantor breaches any material term of this Agreement, or either party is declared bankrupt, creates or permits an assignment for the benefit of its creditors, is dissolved, or ownership and control of said party is transferred to a third party.

  • 12. Covenantor acknowledges its obligations to control access to technical data under the United States Export Laws and Regulations and agrees to adhere to such laws and regulations with regard to any technical data received under this Agreement.

  • 13. In the event Covenantor breaches or threatens to breach any of the covenants expressed herein, the damage to the Institute will be great and irreparable and difficult to quantify; therefore, the Institute may apply to a court of competent jurisdiction for injunctive or other equitable relief to restrain such breach or threat of breach, without disentitling the Institute from any other relief in either law or equity.

  • 14. Covenantor agrees to indemnify and hold harmless the Institute from all losses, damages, causes of action, and attorneys’ fees incurred by the Institute arising from the breach of this Agreement by Covenantor.

  • 15. This Agreement merges and supersedes all prior Agreements between the parties hereto, and shall be governed by, and construed in accordance with, the domestic laws of the State of Texas, of the United States of America, excluding its principles of conflicts of laws. The parties hereto agree that any action related to this Agreement shall solely be venued in the Federal District Court for the Western District of Texas and the parties hereby irrevocably submit to the jurisdiction and venue of said court.

  • 16. This Agreement shall not be assigned by any party hereto without the express prior written consent of the other party.

  • 17. In the event that the Confidential Information is or becomes the subject of a patent application, patent, copyright application, or copyright, the Covenantor agrees and understands that the Institute will have all the rights and remedies available to it under the law as a result of said patent applications, patents, copyright applications or copyrights, and that disclosure of such Confidential Information to the Covenantor does not in any way effect those rights and remedies.

  • 18. It is understood by the Covenantor that the Confidential Information disclosed hereunder may relate to products that are under development or planned for development. THE INSTITUTE DISCLAIMS ANY IMPLIED WARRANTY OF MERCHANTABILITY, ANY IMPLIED WARRANTY OF FITNESS FOR A PARTICULAR PURPOSE, ANY IMPLIED WARRANTY OF NON-INFRINGEMENT, AND ANY EXPRESS WARRANTY WITH RESPECT TO ANY OF THE CONFIDENTIAL INFORMATION AND DOCUMENTATION DISCLOSED HEREUNDER. The Institute accepts no responsibility as a result of any expenses, losses, damages, or actions incurred or undertaken by the Covenantor as a result of the Covenantor’s receipt or use of any Proprietary Information or documentation.

  • 19. All notices and requests under this Agreement must be in writing and any changes to this Agreement must be in writing and signed by both parties to be effective. All written notices hereunder shall be deemed to be given to the Institute upon a certified or registered mailing if addressed as follows (unless such addresses are changed upon written notice):

    1. For the Institute:

    2. Pecan Street Research Institute
    3. Attention: General Counsel
    4. jshead@pecanstreet.org
    5. 3925 W. Braker Lane
    6. Austin, TX 78759

  • 20. The waiver by either party hereto of any breach of the terms and conditions hereof will not be considered a modification of any provision, nor shall such a waiver act to bar the enforcement of any subsequent breach.