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Res 1042 - UMTA Grnt Fund 90/91 COUNCIL BILL NO. 1282 RESOLUTION NO. 1042 A RESOLUTION AUTHORIZING AN INCREASE IN TRANSIT FUND APPROPRIATIONS DERIVED FROM CAPITAL ASSISTANCE GRANT FUNDS UNDER SECTION 18 OF THE URBAN MASS TRANSPORTATION ACT OF 1964 (UMTA) DURING FISCAL YEAR 1990-91. WHEREAS, Oregon Revised Statutes 294.326 allows for the expenditure of grant funds for specific purposes received during the current fiscal year, and WHEREAS, the City has entered into an agreement (Resolution NO.1 030) with the State of Oregon, Department of Transportation, for the receipt of a capital assistance grant to assist in the purchase of a modified paratransit van for the Dial-a-Ride program, now, therefore, THE CllY OF WOODBURN RESOLVES AS FOLLOWS: follows: Section 1. That appropriations be established and increased for fiscal year 1990-91 as TRANSIT FUND REVENUES: (Dial-a-Ride Program) State Grant - Capital (1 0-120-45034) $ 27,900 TRANSIT FUND EXPENDITURES: (Dial-a-Ride Program) Capital Outlay - Purchase/Lease Bus (10-120-71155) $ 27,900 Section 2. That the amount outlined in Section 1 is hereby authorized to be appropriated for its specific purpose. Approved as to Form7l.'Y\r ~ ..:s - 5 - c:; ( City Attorney Date APPROVED 0! L~ ~ Passed by the Council Submitted to the Mayor Approved by the Mayor Filed in the office of the Recorder ATTEST fll~--r~cd Mary Te ant, Deputy Recorder City of Woodburn, Oregon Page 1 - COUNCIL BILL NO. 1282 RESOLUTION NO. 1042 March II, 1991 March 12. 1991 March 12, 1991 March 12, 1991 . , 1 . .,_.._---."'.>~....,_._.~...--------.........'~---_.~_._, COUNCIL BILL NO. 1280 RESOLUTION NO. 1041 A RESOLUTION ENTERING INTO A CO-INVENTOR AGREEMENT WITH DEAN MORRISON AND FRANK TIWARI AND AUTHORIZING THE MAYOR AND DEPUTY CITY RECORDER TO SIGN SAID AGREEMENT. WHEREAS, the City Council conducted a workshop on February 4, 1991 addressing the development of a transpirator, an apparatus for waste water purification, and WHEREAS, the Council finds that said transpirator was developed by Dean Morrison and Frank Tiwari as a private project with their own funds and resources, and WHEREAS, a prototype of said transpirator was tested at the City's wastewater treatment facility, and WHEREAS, the Council further finds that Dean Morrison and Frank Tiwari invented the transpirator, have borne the expenses of developing the prototype of the invention, have borne the legal costs for conducting a patentable novelty search for the invention and are bearing the cost of patenting the invention and all related legal expenses, NOW, THEREFORE, THE CITY OF WOODBURN RESOLVES AS FOLLOWS: Section 1. That the City of Woodburn enter into an agreement with Dean Morrison and Frank Tiwari regarding the patent application and license to use said transpirator. Said agreement is attached hereto, and by this reference, incorporated herein. Section 2. That the Mayor and Deputy City Recorder be authorized to sign said agreement on behalf of the City. Approved as to form: City Attorney Date APPROVED: 11~uJ~ FRED W. KYS MAYOR Page 1 - COUNCIL BILL NO. 1280 RESOLUTION NO. 1041 ~- .--.-. .....".-..".T--. Passed by the Council February 25, 1991 Submitted to the Mayor February 26, 1991 Approved by the Mayor February 26, 1991 Filed in the Office of the Recorder ATTEST: ~J~ Mary Tenna ,Deputy Recorder City of Woodburn, Oregon February 26, 1991 Page 2 - COUNCIL BILL NO. 1280 RESOLUTION NO. 1041 ~ , --,- TO. '.,.. AGREEMENT This Agreement is made and entered into as of February 26 , 1991 by and among DEAN MORRISON ("Morrison") and FRANK TIWARI ("TIwari") (collectively the "Co-Inventors"), and the CllY OF WOODBURN, OREGON ('Woodburn'l RECITALS A. The Co-Inventors have together, and with varying degrees otcontributions, conceived and reduced to practice a method and apparatus for a waste water purification system (the "Invention"). B. The Co-Inventors are employed by Woodburn, and the prototype of the Invention was tested during the course of their employment by Woodburn. C. The Co-Inventors had the primary role in conceiving of and reducing to practice the Invention, have borne the expenses of developing the prototype of the Invention, have borne the legal costs for conducting a patentable novelty search for the Invention and are bearing the cost of patenting the Invention and related legal expenses, as set forth below. D. To formalize the respective rights of the Co-Inventors and Woodburn and to recognize their unequal contributions to the development of the Invention and the cost of patenting the Invention, and in order to avoid any dispute over their respective rights and responsibilities relating to the development of the Invention to the patent application process, and to any patent that might issue, the Co-Inventors and Woodburn wish to enter into this Agreement. THEREFORE, in consideration of the covenants, terms and conditions set forth herein, the undersigned agree: The above recitals are contractual and not merely recitals, and are incorporated by this reference. 1. Ownershio Interest. 1.1 Resoective Interests. The Co-Inventors and Woodburn acknowledge and agree that the ownership rights of the parties in and to the Invention are as follows: Morrison Tiwari Woodburn 55% 35% 10% Page 1 - AGREEMENT 'M ,,,.,_._.___..+,,~,_,..~___~..,.,.,,.._,_,_._,...~...,_'_*"..,.".._..,.,.~_.._...._-- - ," '" 2. License Riahts. 2.1 Ucense to Woodburn. Woodburn has the right to use the Invention on a royalty free, nonexclusive basis for the duration of any patent which may issue on the Invention. 2.2 Ucense to Emolover. Each Co-Inventor shall have the personal right, nontransferable either by inheritance or conveyance, to enter into agreements to license the Invention to the entity by whom such party is employed on a full-time basis ("Ucense to Employer"), provided that no party may enter into any such agreement at any time within twelve (12) months of that party having entered into a prior such agreement. Such licenses shall: 2.2.1 Be to use the Invention on a royalty-free, nonexclusive basis. 2.2.2 Be nontransferable by the licensee. Co-Inventors. 2.2.3 Contain reasonable protections of the proprietary rights of the 2.2.4 Be for such duration as shall be determined between the licensor and the licensee, subject to the approval of the other Co-Inventors. 2.2.5 Contain a right of immediate termination by any Co-Inventor If the Co-Inventor reasonably determines that such license violates the terms of this Section 2.2. The Co-Inventors shall each have the right to grant such licenses to their employers and are hereby given express authority on behalf of all Co-Inventors and Woodburn to grant such licenses, as set forth above. 2.3 Riahts of Co-Inventors to Grant Ucenses to Others. In addition to the Ucense to Employer set forth in Section 2.2, the Co-Inventors may jointly grant nonexclusive licenses to use the Invention to parties other than their employers and on such terms and conditions as the Co-Inventors shall from time to time agree upon in their joint discretion, including the right to grant licenses for nominal consideration. The Co- Inventors shall have the right to grant such licenses and are hereby given express authority on behalf of Woodburn to grant such licenses. Royalties on any such licenses shall be negotiated by the Co-Inventors and shall be divided among the Co-Inventors and Woodburn in accordance with their respective ownership interests as set forth in Section 1. Page 2 - AGREEMENT "_" .,... ,'H'__'___"__"'~'~____'_~__"_'_"'_"_'_""""___"-.._-~.~._-_.~-"._-,- 2.4 Infrinaement. The Co-Inventors shall have the full responsibility to protect any patent issuing on the Invention from infringement by others and agree to prosecute infringers whenever, in their opinion, it appears reasonably necessary to do so. 3. Patent Application. The Co-Inventors shall have the responsibility at their costs and expense, including attorney fees, for pursuing and maintaining patent protection on the Invention and shall have control over the prosecution of the patent application, and Woodburn hereby agrees to sign such papers and render such assistance as necessary to obtain patents on the invention. . 4. No Other Authoritv Granted. No party to this Agreement is given any authority to license or to take any other action with respect to the Invention except as is set forth herein. 5. Indemnification. If any party to this Agreement improperly or unlawfully licenses, uses or misuses the Invention, that party shall indemnify defend and hold harmless the other parties to this Agreement from any suit, action, claim, cost, unauthorized, unlawful or improper licensing, use or misuse of the Invention by that party. 6. Attornev Fees. In the event of any dispute between the parties to this Agreement, the prevailing party or parties shall be entitled, whether or not any action or arbitration is instituted, to recover from the nonprevailing party or parties reasonable costs, disbursements and attorneys fees, including without limitation at trial, on appeal, on denial of any petition for review, and in connection with enforcement of any judgment. 7. Assianment. The Co-Inventors may jointly assign some or all of their interests hereunder to other parties having interests in the Invention, and such other parties may have such rights with respect to the Invention as shall be granted by the Co- Inventors. Except as set forth herein, no Co-Inventor nor Woodburn shall transfer, sell or assign (whether by way of assignment, sublicense or operation of law) any right, obligation or interest under this Agreement without first obtaining the written consent of all other parties hereto. 8. Final Aareement: Modification: Savinas Clause. This Agreement is the final and entire agreement of the parties with respect to the subject matter and supersedes all prior of contemporaneous oral or written communications or agreements between the parties. It shall not be modified in any way except in writing signed by the parties. If any provision of this Agreement shall become less than fully operative, the remaining portion thereof and all other provisions of this Agreement shall, nevertheless, remain in full force and effect. 9. Leaal Counsel. This Agreement has been prepared by Weiss, Jensen, Ellis & Botteri, P.C., in its capacity as legal counsel to Dean Morrison. All other parties hereby acknowledge that they have not been represented by Weiss, Jensen, Ellis & Botteri, P.C. Page 3 - AGREEMENT . .. T ,- "'---~_...,.._-.--.. ,.....__.~, .~". ....--------,. "'_"'_-"-'~".'-..- in this transaction, and that they have been advised to seek their own counsel in connection with this Agreement. IN WITNESS WHEREOF, parties hereto have executed, or caused to be executed by their duly authorized representative, this Agreement as of the date first hereinabove written. ~0o,," 2:;2~ Dean Morrison Fra~~1 By: Title: Mayor By: /!I~ ~ Title: Deputy City Recorder Legel/WWT.AGM Page 4 - AGREEMENT " .,._,..,. ......__,..._._~_._.."."..__ __._~,~_.,_._,..._~~~___,., _,_',___.n. . ~