<PAGE>
EXHIBIT 10(a)
SUBCONTRACT AGREEMENT BETWEEN SUPERCONDUCTIVE COMPONENTS, INC.
AND
THE OHIO STATE UNIVERSITY RESEARCH FOUNDATION
The following describes the terms and conditions under which The Ohio State
University Research Foundation whose address is 1960 Kenny Road, Columbus, Ohio
43210-1063; hereinafter referred to as "SUBCONTRACTOR", acting on behalf of the
College of Engineering, agrees to conduct studies as described below under
subcontract to Superconductive Components, Inc., whose address is 1145
Chesapeake Ave., Columbus, Ohio 43212, hereinafter referred to as COMPANY.
1. WORKSCOPE
SUBCONTRACTOR agrees to conduct research and development services. The
scope of work described in the SUBCONTACTOR's proposal 66443-55-00 and
attached hereto as Attachment A, shall be completed. The work will be
conducted to partly satisfy COMPANY's, Small Business Technology
Transfer contract with the National Science Foundation, entitled "NOx
Sensor for Internal Combustion Engines", Dr. Prabir Dutta will act as
the SUBCONTRACTOR's Principal Investigator and direct the technical
activity of the subcontracted work.
2. PERIOD OF PERFORMANCE
This agreement is effective on April 1, 2000 and end March 31, 2001
unless extended.
3. PRICE
SUBCONTRACTOR agrees to perform the workscope on a Firm-Fixed Price
basis, in the amount of $20,000. Any additional charges for services
not provided for in the workscope must be approved in writing in
advance.
4. REPORTING
SUBCONTRACTOR will provide a technical progress report on or about
November 15, 2000 and a final technical report on or before April 30,
2001.
6. BILLING AND PAYMENT
COMPANY will pay according to the following payment schedule:
April 2000 $4,000 June 2000 $4,000
May 2000 $4,000 July 2000 $4,000
August 2000 $4,000
SUBCONTRACTOR will provide invoices in accordance with the above
payment schedule Payments will be made by COMPANY within thirty (30)
days of invoices, SUBCONTRACTOR hereby acknowledges receipt of $12,000,
representing the first three (3) payments under this Agreement.
6. STANDARD OF PERFORMANCE
SUBCONTRACTOR will perform the workscope in accordance with generally
accepted professional practices. HOWEVER, AND BECAUSE OF THE NATURE OF
SUCH EFFORT, SUBCONTRACTOR MAKES NO WARRANTY OR GUARANTEE WHATSOEVER IN
CONNECTION WITH THE FURNISHING OF THE SERVICES OR THE USE OR
IMPLEMENTATION OS SUCH SERVICES BY PURCHASER.
7. MATERIALS, APPLIANCES, EMPLOYEES
Unless otherwise stipulated, the SUBCONTRACTOR shall provide and pay
for all materials, labor, tools, equipment, transportation and other
facilities necessary for the execution and completion of the work.
<PAGE>
8. TERMINATION
Performance under this agreement may be terminated by either party upon
thirty (30) days written notice. Upon termination, SUBCONTRACTOR will
be reimbursed for all costs and non-cancelable commitments incurred in
the performance of the work, but not to exceed the fixed price
specified in PRICE. Non-cancelable commitments include scheduled
stipends to graduate students.
9. RIGHT TO PUBLISH
SUBCONTRACTOR reserves the right to publish the results of this
investigation. Before publishing, however, SUBCONTRACTOR shall notify
COMPANY of its intention to publish, and shall submit the manuscript to
COMPANY for review and comment. COMPANY shall have thirty (30) days
from receipt of the manuscript to present any comments, which shall be
in writing, to SUBCONTRACTOR. COMPANY'S comments shall be given due
consideration by SUBCONTRACTOR. Furthermore, SUBCONTRACTOR agrees to
not publish COMPANY'S Proprietary or Confidential Information without
the prior written consent of COMPANY. The publication of the results
may be delayed for a period not to exceed six (6) months if it contains
a disclosure of an invention(s) on which either party desires to file a
United States or foreign patent. It is understood that in no case can
this provision for delay of publication pending patent filing cause a
delay in the normal academic progress of a SUBCONTRACTOR graduate
student with respect to preparation and submission of a graduate thesis
or dissertation. SUBCONTRACTOR agrees to not incorporate COMPANY'S
Confidential or Proprietary Information in any thesis or dissertation.
10. CONFIDENTIAL INFORMATION
A. During the course of performing the workscope described,
SUBCONTRACTOR may be exposed to Proprietary Information of
COMPANY. The Proprietary Information may include, for example,
documents, data, know-how, formulae, processes, designs,
customer lists, specifications, samples, reports, findings,
inventions or ideas, but not limited to these forms.
Regardless of the form in which the Proprietary Information
was disclosed to SUBCONTRACTOR, such Information must be
identified in writing as being proprietary and confidential
information of the COMPANY.
B. SUBCONTRACTOR shall not use Proprietary Information disclosed
by COMPANY under this subcontract for any purpose except for
the purpose of performing the workscope described.
C. SUBCONTRACTOR agrees to maintain COMPANY'S Proprietary
Information in confidence, and not to disclose it to any Third
parties except COMPANY further agrees that the obligation of
confidence undertaken above does not prevent the disclosing of
any information pursuant to the subpoena power of any court of
any civil investigation demand issued by a governmental agency
or as otherwise may be required by law.
D. Nothing contained herein shall deprive the SUBCONTRACTOR of
the right to disclose or use any information that is:
(i) generally known or which becomes generally known as
evidenced by printed publications through no fault of
the SUBCONTRACTOR; or
(ii) which is possessed by SUBCONTRACTOR as evidenced by
dated, written records kept in the ordinary course of
business, before receipt from COMPANY; or
(iii) which is disclosed to SUBCONTRACTOR by a third party
who has an independent right to such information.
E. The obligation of confidentiality undertaken by the
SUBCONTRACTOR shall survive any termination of this Agreement.
-2-
<PAGE>
11. INTELLECTUAL PROPERTY
Intellectual Property shall be governed by the Cooperative Agreement
dated December 11, 1998 and attached hereto, as Attachment B.
12. ASSIGNMENT
Neither party to the Contract shall assign or sublet it as a whole
without the written consent of the other, nor shall the SUBCONTRACTOR
assign any money due or to become due to him hereunder, without the
previous written consent of COMPANY.
13. APPLICABLE LAW
This agreement shall be governed and construed in accordance with the
laws of the State of Ohio.
14. EQUAL OPPORTUNITY
During the performance of the Contract and to the extent that Executive
Order Number 11246 may be applicable to this contract, SUBCONTRACTOR
agrees as follows:
A. SUBCONTRACTOR will not discriminate against any employee or
applicant for employment because of race, color, religion,
sex, national origin, ancestry, physical handicap, mental
condition, marital status, age, or veteran status.
SUBCONTRACTOR agrees to post in conspicuous places, available
to employees and applicants for employment, any notices
provided to the SUBCONTRACTOR, which set forth the provisions
of this nondiscrimination clause.
B. SUBCONTRACTOR will, in all solicitations or advertisements for
employees placed by or on behalf of SUBCONTRACTOR, state that
all qualified applicants will receive consideration for
employment without regard to race, color, religion, sex,
national origin, ancestry, physical handicap, mental
condition, marital status, age, or veteran status.
15. CERTIFICATION OF NONSEGREGATED FACILITIES
A. "Segregated facilities", as used in this provision, means any
waiting rooms, work areas, rest rooms and washrooms,
restaurants and other eating areas, time clocks, locker rooms
and other storage or dressing areas, parking lots, drinking
fountains, recreation or entertainment areas, transportation,
and housing facilities provided for employees, that are
segregated by explicit directive or are in fact segregated on
the basis of race, color, religion, or national origin because
of habit, local custom, or otherwise.
B. SUBCONTRACTOR certifies that it does not and will not maintain
or provide for its employee any segregated facilities at any
of its establishments, and that it does not and will not
permit its employees to perform their services at any location
under its control where segregated facilities are maintained.
SUBCONTRACTOR agrees that a breach of this certification is a
violation of the Equal Opportunity clause in this contract.
16. CLEAN AIR AND WATER CERTIFICATION
SUBCONTRACTOR certifies that any facility to be used in performance of
this contract is not X listed on the Environmental Protection Agency
List of Violating Facilities.
SUBCONTRACTOR agrees to notify COMPANY immediately, in writing, of the
receipt of any communication from the Administrator, or a designee, of
the Environmental Protection Agency, indicating that any facility
intended or being used in performance of this contract is under
consideration to be listed on the EPA List of Violating Facilities.
17. SURVIVABILITY
The provisions of Sections 9, 10 and 11 shall survive any termination
or expiration of this Agreement
-3-
<PAGE>
Agreed to and Accepted:
The Ohio State University COMPANY
Research Foundation Superconductive Components, Inc.
By By:
------------------------------------- ----------------------------------
Signed: Signed:
-------------------------------- -----------------------------
Title: Title:
--------------------------------- ------------------------------
Date: Date:
----------------------------------- -------------------------------
-4-
<PAGE>
ATTACHMENT A
STATEMENT OF WORK
TITLE: NOx SENSOR FOR INTERNAL COMBUSTION ENGINES
1) Synthesis and the characterization of the auxiliary phases
Responsibilities:
CISM:
- Formulation of the compound
- Microstructural studies
SCI:
- Synthesis of the powder
- Characterization of the powder
ACTIVITIES
1. Formulation of the compound
2. Synthesis of the powder
3. Calcination of the powder
4. Phase analysis by XRD
5. Stoichiometry verification by ICP
6. Particle size analysis
7. Microstructural studies
2) Preparation and characterization of the zeolite
Responsibilities:
CISM:
- Formulation of the compound
- Preparation of the powder
- Microstructural studies
- Characterization of the powder
ACTIVITIES
1. Preparation of ion-exchange solutions
2. Prepare HY and CUY, various loading levels
3. Phase analysis by XRD
4. Stoichiometry verification by ICP
5. Particle size analysis
6. Microstructural studies
3) Fabrication of the sensor
Responsibilities:
CISM:
- Fabrication of the sensor
SCI:
- Packaging of the sensor
-5-
<PAGE>
ACTIVITIES
1. Design the prototype
2. Preparation of zeolite materials
3. Deposition of electrodes, zeolite, and metal oxide
4. Packaging of the sensor
-6-
<PAGE>
ATTACHMENT B
COOPERATIVE AGREEMENT
SMALL BUSINESS TECHNOLOGY TRANSFER (STTR) PROGRAM ALLOCATION OF RIGHTS IN
INTELLECTUAL PROPERTY AND RIGHTS TO CARRY OUT FOLLOW-ON RESEARCH, DEVELOPMENT,
OR COMMERCIALIZATION.
This Agreement between Superconductive Components, Inc., a small business
concern organized as an Ohio Corporation under the laws of the State of Ohio and
having a principal place of business at 1145 Chesapeake Ave., Columbus, OH
43212, ("SBC") and The Ohio State University Research Foundation, a research
institution having a principal place of business at 1960 Kenny Road, Columbus,
OH 43210, ("RI") is entered into for the purpose of allocating between the
parties certain rights relating to an STTR project to be carried out by SBC and
RI (hereinafter referred to as the "PARTIES") under an STTR funding agreement
that may be awarded by the National Science Foundation (NSF) to SBC to fund a
proposal entitled "NOx Sensor for Internal Combustion Engines," submitted, or to
be submitted, to NSF by SBC on or about December 14, 1998.
1. Applicability of this Agreement.
(a) This Agreement shall be applicable only to matters relating to
the STTR project referred to in the preamble above.
(b) If a funding, agreement for an STTR project is awarded to an
SBC based upon the STIR proposal referred to in the preamble
above, SBC will promptly provide a copy of such funding
agreement to RI, and SBC will make a subaward to RI in
accordance with the funding agreement, the proposal, and this
Agreement. If the terms of such funding agreement appear to be
inconsistent with the provisions of this Agreement, the
Parties will attempt in good faith to resolve any such
inconsistencies. However, if such resolution is not achieved
within a reasonable period, SBC shall not be obligated to
award nor RI to accept the subaward. If a subaward is made by
SBC and accepted by RI, this Agreement shall not be applicable
to contradict the terms of such subaward or of the funding
agreement awarded by NSF to SBC except on the grounds of
fraud, misrepresentation, or mistake, but shall be considered
to resolve ambiguities in the terms of the subaward.
(c) The provisions of this Agreement shall apply to any and all
consultants, subcontractors, independent contractors, or other
individuals employed by SBC or RI for the purposes of this
STTR project.
2. Background Intellectual Property.
(a) "Background Intellectual Property" means property and the
legal right therein of either or both parties developed before
or independent of this Agreement including inventions, patent
applications) patents, copyrights, trademarks, mask works,
trade secrets and any information embodying proprietary dam
such as technical data and computer software.
(b) This Agreement shall not be construed as implying that either
party hereto shall have the right to use Background
Intellectual Property of the other in connection with this
STTR project except as otherwise provided hereunder.
(1) The following Background Intellectual Property Of SBC
may be used nonexclusively and, except as noted,
without compensation by RI in connection with
research or development activities for this STTR
project (if "none" so state):
NONE:
-7-
<PAGE>
(2) The following Background Intellectual Property of RI
may be used nonexclusively and, except as noted,
without compensation by SBC in connection with
research or development activities for this STTR
project (if "none" so state):
NONE:
(3) The following Background Intellectual Property of RI
may be used by SBC nonexclusively in connection with
commercialization of the results of this STTR
project, to the extent that such use is reasonably
necessary for practical, efficient and competitive
commercialization of such results but not for
commercialization independent of the
commercialization of such results upon the condition
that SBC pay to RI, in addition to any other royalty
including any royalty specified in the following
list, a royalty of 2% of net sales or leases made by
or under the authority of SBC of any product or
service that embodies, or the manufacture or normal
use of which entails the use of, all or any part of
such Background Intellectual Property (if "none" so
state):
BACKGROUND INTELLECTUAL PROPERTY WILL CONSIST OF THE
OHIO STATE UNIVERSITY RESEARCH FOUNDATION INVENTION
DISCLOSURE 97ID66F ENTITLED POTENTIOMETRIC TYPE NOx
WITH ZEOLITE COATED ELECTRODES.
3. Project Intellectual Property.
(a) "Project Intellectual Property" means the legal rights
relating to inventions (including Subject Inventions as
defined in 37 CFR Section 401), patent applications, patents,
copyrights, trademarks, mask works, trade secrets and any
other legally protectable information, including computer
software, first made or generated during the performance of
this STTR Agreement.
(b) Except as otherwise provided herein, ownership of Project
Intellectual Property shall vest in the party whose personnel
conceived the subject matter or first actually reduced the
subject matter to practice, and such party may perfect legal
protection therein in its own name and at its own expense.
Jointly made or generated Project Intellectual Property shall
be jointly owned by the Parties unless otherwise agreed in
writing. The SBC shall have the first option to perfect the
rights in jointly made or generated Project Intellectual
Property unless otherwise agreed in writing.
(1) Profits, resulting from any product, process, or
other innovation or invention based on the
cooperative agreement shall be negotiated in good
faith at the conclusion of the project.
(2) Expenses and other liabilities associated with the
development and marketing of any product, process, or
other innovation or invention shall be allocated as
follows: the SBC will be responsible for one hundred
percent (100%) and the RI will be responsible for
zero (0) percent.
(c) The Parties agree to disclose to each other, in writing, each
and every Subject Invention which may be patentable or
otherwise protectable under the United States patent laws in
Title 35, United States Code. The Parties acknowledge that
they will disclose Subject Inventions to each other and the
awarding agency within one (1) month after their respective
inventor(s) first disclose the invention in writing to the
person(s) responsible for patent matters of the H disclosing
Party. All written disclosures of such inventions shall
contain sufficient detail of the invention, identification of
any statutory bars, and shall be marked confidential, in
accordance with 35 U.S.C. Section 205.
(d) Each party hereto may use Project Intellectual Property of the
other nonexclusively and without compensation in connection
with research or development activities for this STTR project,
including inclusion in STTR project reports to the NSF and
proposals to the NSF for continued funding of this STTR
project through additional phases.
-8-
<PAGE>
(e) In addition to the Government's rights under the Patent Rights
clause of 37 CFR Section 401.14, the Parties agree that the
Government shall have an irrevocable, royalty free,
nonexclusive license for any governmental purpose in any
Project Intellectual Property.
(f) SBC will have an option to commercialize the Project
Intellectual Property of RI, subject to any rights of the
Government therein, as follows --
1) Where Project Intellectual Property of RI is a
potentially patentable invention, SBC will have an
exclusive option for a license to such invention, for
an initial option period of six (6) months after such
invention has been reported to SBC. SBC may, at its
election and subject to the patent expense
reimbursement provisions of this section, extend such
option for an additional three (3) months by giving
written notice of such election to RI prior to the
expiration of the initial option period. During the
period of such option following notice by SBC of
election to extend, RI will pursue and maintain any
patent protection for the invention requested in
writing by SBC and, except with the written consent
of SBC or upon the failure of SBC to reimburse
patenting expenses as required under this section,
will not voluntarily discontinue the pursuit and
maintenance of, any United States patent protection
for the invention initiated by RI or of any patent
protection requested by SBC. For any invention for
which SBC gives notice of its election to extend the
option, SBC will, within thirty (30) days after
invoice, reimburse RI for the expenses incurred by RI
prior to expiration or termination of the option
period in pursuing and maintaining (i) any United
States patent protection initiated by RI and (ii) any
patent protection requested by SBC. SBC may terminate
such option at will by giving written notice to RI in
which case further accrual of reimbursable patenting
expenses hereunder, other than prior commitments not
practically revocable, will cease upon RI's receipt
of such notice. At any time prior to the expiration
or termination of an option, SBC may exercise such
option by giving written notice to RI, whereupon the
parties will promptly and in good faith enter into
negotiations for a license under RI's patent rights
in the invention for SBC to make, use and/or sell
products and/or services that embody, or the
development, manufacture and/or use of which involves
employment of the invention. The terms of such
license will include: (i) payment of reasonable
royalties to RI on sales of products or services
which embody, or the development, manufacture or use
of which involves employment of the invention, (ii)
reimbursement by SBC of expenses incurred by RI in
seeking and maintaining patent protection for the
invention in countries covered by the license (which
reimbursement, as well as any such patent expenses
incurred directly by SBC with RI's authorization,
insofar as deriving from RI's interest in such
invention, may be offset in full against up to fifty
percent (50%) of accrued royalties in excess of any
minimum royalties due RI); and, in the case of an
exclusive license, (iii) reasonable commercialization
milestones and/or minimum royalties.
(2) Where Project Intellectual Property of RI is other
than a potentially patentable invention, SBC will
have an exclusive option for a license, for an option
period extending until L months following completion
of RI's performance of that phase of this STTR
project in which such Project Intellectual Property
of R1 was developed by RI SBC may exercise such
option by giving written notice to RI, whereupon the
parties will promptly and in good faith enter into
negotiations for a license under RI's interest in the
subject matter for SBC to make, use and/or sell
products or, services which embody, or the
development, manufacture and/or use of which involve
employment of, such Project Intellectual Property of
RI. The terms of such license will include: (i)
payment of reasonable royalties to RI on sales of
products or services that embody, or the development,
manufacture or use of which involves employment of,
the Project Intellectual Property of RI and, in the
case of an exclusive license, (ii) reasonable
commercialization milestones and/or minimum
royalties.
-9-
<PAGE>
(3) Where more than one royalty might otherwise be due in
respect of any unit of product or service under a
license pursuant to this Agreement, the parties shall
in good faith negotiate to ameliorate any effect
thereof that would threaten the commercial viability
of tile affected products or services by providing in
such license(s) for a reasonable discount or cap on
total royalties due in respect of any such unit.
4. Follow-on Research or Development.
All follow-on work, including any licenses, contracts, subcontracts,
sublicenses or arrangements of any type, shall contain appropriate
provisions to implement the Project Intellectual Property rights
provisions of this agreement and insure that the Parties and the
Government obtain and retain such rights granted herein in all future
resulting research, development, or commercialization work.
5. Confidentiality/Publication.
(a) Background Intellectual Property and Project Intellectual
Property of a party, as well as other property or confidential
information of a party, disclosed by that party to the other
in connection with this STTR project shall be received and
held in confidence by the receiving party and, except with the
consent of the disclosing party or as permitted under this
Agreement, neither used by the receiving party nor disclosed
by the receiving party to others, provided that the receiving
party has notice that such information is regarded by the
disclosing party as proprietary or confidential. However,
these confidentiality obligations shall not apply to use or
disclosure by the receiving party after such information is or
becomes known to the public without breach of this provision
or is or becomes known to the receiving party from a source
reasonably believed to be independent of the disclosing party
or is developed by or for the receiving party independently of
its disclosure by the disclosing party.
(b) Subject to the terms of paragraph (a) above, either party may
publish its results from this STTR project, However, the
publishing party will negotiate the right of review with the
other party with respect to a proposed publication, as well as
a 30 day period in which to review proposed publications and
submit comments, which will be given full consideration before
publication. Furthermore, upon request of the reviewing parry,
publication will be deferred for up to 150 additional days for
preparation and filing of a patent application which the
reviewing party has the right to file or to have filed at its
request by the publishing party.
6. Liability.
(a) Each party disclaims all warranties running to the other or
through the other to third parties, whether express or
implied, including without limitation warranties of
merchantability, fitness for a particular purpose, and freedom
from infringement, as to any information, result, design,
prototype, product or process deriving directly or indirectly
and in whole or pan from such party in connection with this
STTR project.
(b) SBC will indemnify and hold harmless RI with regard to any
claims arising in connection with commercialization of the
results of this STTR project by or under the authority of SBC.
To extent permitted under Ohio law, the PARTIES will indemnify
and hold harmless the Government with regard to any claims
arising in connection with commercialization of the results of
this STTR project.
7. Termination.
(a) This agreement ma be terminated by either Party upon thirty
(30) days written notice to the other Party. This agreement
may also be terminated by either Party in the event of the
failure of the other Party to comply with the terms of this
agreement.
-10-
<PAGE>
(b) In the event of termination by either Parry, each Party shall
be responsible for its share of the costs incurred through the
effective date of termination, as well as its share of the
costs incurred after the effective date of termination, and
which are related to the termination. The confidentiality,
use, and/or non-disclosure obligations of this agreement shall
survive any termination of this agreement.
8. Governing Law.
(a) This agreement shall be governed by the state of Ohio and
shall also be subject to applicable U.S. federal laws and
regulations which derive from the prime National Science
Foundation grant to SBC.
AGREED TO AND ACCEPTED
Small Business Concern
By: Date:
----------------------------------- --------------------------
Print Name:
---------------------------
Title:
--------------------------------
Research Institution
By: Date:
----------------------------------- --------------------------
Print Name:
---------------------------
Title:
--------------------------------
-11-
