Attachment 1, Ownership Addendum
This addendum contains requirements that must be met for EPIC-Funded Projects, as further
described herein.
FAILURE TO COMPLY WITH THESE EPIC REQUIREMENTS MAY BE TREATED
BY SCE AS A CONTRACTUAL BREACH AND MAY DISQUALIFY YOU FROM
PERFORMING WORK ON EPIC-FUNDED PROJECTS IN THE FUTURE.
BACKGROUND INFORMATION
A. The California Public Utilities Commission on November 14, 2013 issued Decision
13-11-025 (herein referred to as the “EPIC Decision”) which approves SCE’s use of
an Electric Program Investment Charge (“EPIC”) for funding research projects that
meet EPIC Decision requirements (“EPIC Funded Projects”).
B. This addendum describes EPIC Decision requirements that apply when you are
performing work covered by the EPIC Decision.
TERMS
1.
When any intellectual property is created or developed as part of an EPIC Funded
Project, SCE owns the intellectual property (referred to herein as “EPIC Funded Intellectual
Property”). The term “EPIC Funded Intellectual Property” includes inventions, discoveries,
software, programs, development tools, methodologies, specifications, processes, know-how,
blueprints, drawings, designs, patterns, copyrights, copyrightable subject matter, formulae, data,
databases, findings, results, computer models, products, technology, trade secrets, proprietary
information, and confidential information, or any other similar rights, whether or not patentable.
2.
Contractor shall within 30 days of conception notify SCE of any EPIC-Funded
Intellectual Property that may be patentable. When requested by SCE, Contractor shall file a
timely patent application to protect EPIC Funded Intellectual Property with patentable subject
matter. When new EPIC Funded Intellectual Property is not patentable, then Contractor shall
take reasonable steps to preserve the value of the EPIC Funded Intellectual Property for the
benefit of SCE and SCE’s ratepayers. With copyrighted materials, this includes identifying the
materials as copyrighted and, with trade secrets, this includes restricting disclosure under an
appropriate nondisclosure agreement. SCE’s ownership rights include a right to patent the EPIC
Funded Intellectual Property (or to allow the State of California to do so) if the Contractor (i)
does not patent the EPIC Funded Intellectual Property or (ii) does not patent the EPIC Funded
Intellectual Property in a manner that benefits ratepayers funding the EPIC Funded Project.
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When asked, Contractor shall assist SCE or the State of California in obtaining a patent for EPIC
funded Intellectual Property or in licensing the EPIC Funded Intellectual Property, which may
occur through a third party that is authorized to grant licenses for SCE.
3.
Contractor grants the State of California a perpetual, royalty free, non-exclusive license
in the EPIC Funded Intellectual Property for government purposes, including reporting the
results of EPIC Funded Projects to the California Energy Commission, California Governor’s
office, and the Legislature. When requested by SCE, this license to the State of California shall
be sub-licensable by the State of California.
4.
Contractor will indemnify and hold harmless the California Public Utilities Commission,
the California Energy Commission (“CEC”), and their employees free from any liability for use
of EPIC Funded Intellectual Property. This indemnification obligation is in addition to any other
indemnification provisions agreed to by Contractor and applies to all forms of liability including
liability due to actual or alleged infringement, property damage or personal injury. The CPUC
and CEC may enforce this provision directly against you as a third party beneficiary of this
indemnification provision, without such enforcement being limited by any other contracts or
contract language.
5.
Data, findings, results, computer products and other products developed through EPIC
Funded Products will not be maintained confidential unless SCE agrees to do so in an attachment
to this Addendum. When SCE agrees as part of an Addendum that certain Contractor
information will be maintained as confidential information, then Contractor may be required to
prepare a second version of its documents and deliverables, excluding (or masking) information
that SCE identifies as “confidential information.”
6.
Contractor shall not disclose any SCE confidential information, (including, without
limitation, all EPIC Funded Intellectual Property and Confidential Information of SCE defined as
such in a Purchase Order), to a third party without the prior written permission of SCE. Any
restrictions on SCE’s ability to disclose Contractor confidential information (including, without
limitation, any Confidential Information of Contractor as defined in a Purchase Order) , where
such restrictions are contrary to public disclosure requirements in the EPIC Decision, shall not
apply unless SCE agrees these restrictions are consistent with the EPIC Decision.
7.
This Addendum is based on an attached description of the work to be performed (which
is incorporated by reference herein) and a sole source determination by SCE that was based on
this work scope. Except when such a determination is made, work related to this EPIC Project is
subject to SCE’s competitive solicitation processes.
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8.
Contractor shall comply with all applicable requirements issued by the CPUC or CEC for
work on an EPIC Funded Project.
9.
For EPIC funded work, this Addendum adds language and overrides inconsistent or
contrary language in existing Purchase Orders and any related contract documents (except for
subsequent Change Orders issued that modify or amend this Addendum). This Addendum has
no effect on work for projects that are not EPIC Funded Projects.
© Southern California Edison 2013
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