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<br />“Pre-Existing Consultant Materials”) and that Consultant shall retain all right, title and
<br />interest, including intellectual property rights in the Pre-existing Consultant Materials.
<br />Subject to the terms and conditions of this Agreement, Consultant hereby grants to the
<br />Diversion Authority a non-exclusive, non-transferable, royalty-free license, fully
<br />assignable to the Diversion Authority’s member entities, to utilize the Pre-Existing
<br />Consultant Materials for the purpose of the Diversion Authority’s Project.
<br />
<br />B. Derivative Consultant Materials. The Diversion Authority acknowledges and agrees that
<br />in the performance of the services, Consultant will utilize and develop customization,
<br />enhancements, improvements, modifications and adaptations of and to the Pre-Existing
<br />Consultant Materials (the “Derivative Consultant Materials”). Consultant shall retain all
<br />right, title and interest, including intellectual property rights in the Derivative Consultant
<br />Materials. Subject to the terms and conditions of this Agreement, Consultant hereby
<br />grants to the Diversion Authority a non-exclusive, non-transferable, royalty-free license,
<br />fully assignable to the Diversion Authority’s member entities, to utilize the Derivative
<br />Consultant Materials.
<br />
<br />C. New Consultant Materials. The Diversion Authority acknowledges and agrees that in the
<br />performance of the services, Consultant may utilize and develop new software, hardware
<br />and other technology or processes that do not utilize or incorporate, or are not based
<br />upon, the Pre-Existing Consultant Materials (“New Consultant Materials”). Between the
<br />parties, subject to the license grant-back set forth below, the Diversion Authority will
<br />retain all right, title and interest, including without limitation intellectual property rights,
<br />in and to the New Consultant Materials. The Diversion Authority shall have the full
<br />ownership of such New Consultant Materials without any limitation or restriction.
<br />
<br />D. License Grant Back. Subject to the terms and conditions of the Agreement, the Diversion
<br />Authority hereby grants to Consultant a non-exclusive, transferable, royalty-free license
<br />to utilize the concepts, methods, techniques, processes, protocols, ideas, inventions,
<br />know-how, trade secrets, algorithm, software and hardware architecture, and other
<br />background technologies that are newly developed by Consultant under the Agreement
<br />and assigned to the Diversion Authority under this Agreement, to make, have made, use,
<br />reproduce, license, display, perform, distribute, sell, offer for sale, service, support,
<br />import, and otherwise disposed of any products, technologies, and services and for any
<br />purposes without restriction.
<br />
<br />E. License Restrictions. Except as otherwise permitted above, the Diversion Authority and
<br />its member entities shall not, and shall not allow any third party to: (i) modify or
<br />otherwise create derivative works of the Pre-Existing Consultant Materials; (ii) use the
<br />Pre-Existing Consultant Materials for any other purpose, other than the Diversion
<br />Authority’s Project; (iii) make, have made, use, reproduce, license, display, perform,
<br />distribute, sell, offer for sale, service, support, or import any product that incorporates,
<br />embodies and/or is based upon the Pre-Existing Consultant Materials; (iv) sublicense,
<br />distribute or otherwise transfer to a third party any of the Pre-Existing Consultant
<br />Materials by itself or as incorporated in the services; or (v) reverse engineer,
<br />disassemble, decompile or attempt to derive the source code or underlying ideas or
<br />algorithms of the Pre-Existing Consultant Materials. Any additional use of the Pre-
<br />Existing Consultant Materials shall require a separate written license agreement. DRAFT
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