the secrets of non-disclosure agreements
TRANSCRIPT
Photo Credits © Michigan Photography, Scott C. Soderberg
Why, when and how to work with OTT and ORSP
Ed Pagani, PhD
Tony Nielsen, JD
July 30, 2014
Secrets of Non-
Disclosure
Agreements:
© Office of Research and Sponsored Projects 2014
What is a Non-Disclosure Agreement?
© Office of Research and Sponsored Projects 2014
A Non-Disclosure Agreement (an “NDA”) ...
● is a formal agreement (legal contract)
● provides for the exchange and treatment of confidential information
● should be signed prior to exchanging information
● obligates the receiving party to keep secrets
● should identify which information is confidential
● is sometimes called a “Confidentiality Agreement” (CDA) or a
“Proprietary Information Agreement” (PIA)
Examples of Information that may
be Considered Confidential
© Office of Research and Sponsored Projects 2014
● Data, chemical structures, drawings, an idea yet to be disclosed to the
public
● For publication, or not, in a journal, student dissertation, patent application, etc.
● Unpublished patent application
● Provisional patent application, unpublished non-provisional patent application
● Software code, algorithms
● Other
● Customer lists, manufacturing processes, price lists
What is a Non-Disclosure Provision?
© Office of Research and Sponsored Projects 2014
A Non-Disclosure provision may be found in other types of
agreements (e.g., research, licensing, material transfer,
consulting, etc.) and contains many of the same elements of
an NDA.
When do I need an NDA?
(and when do I need something else?)
© Office of Research and Sponsored Projects 2014
NDAs are used when you will...
● participate in preliminary discussions prior to sponsored activity and/or
potential licensing of U-M technology.
You may need something else when you will…
● receive software, a dataset, or money
● conduct research
● perform testing
● provide consulting
● be doing something outside your role as a U-M employee
Is an NDA always Required?
© Office of Research and Sponsored Projects 2014
The short answer is, not always. OTT and ORSP do not require that an
NDA be signed when:
● you and a third party exchange information that is in the public
domain
● OTT or ORSP determines that there is no need for UM information
not in the public domain to be held in confidence
The long answer is, yes, when …
● the party giving you/U-M information requires an NDA
● we/U-M are mutually exchanging confidential information or sending
confidential information to an outside entity
Common Elements of an NDA
© Office of Research and Sponsored Projects 2014
● Party names (e.g. Acme Corp. and U-M agree to…)
● Purpose of why the parties want to enter into the NDA
● Definition of what information must be kept confidential
● Oral vs. written disclosures
● Obligations to keep that information confidential
● Permitted exceptions to those obligations
● Ownership of the confidential information
● Term (time period) of the obligation to keep information confidential
● Retaining copies of confidential information
● Miscellaneous legal provisions (e.g. governing law, jurisdiction, resolving disputes,
export controls, etc.)
Is there more than one type of NDA?
© Office of Research and Sponsored Projects 2014
Yes…there is a one-way and a two-way NDA.
A “one-way” NDA (to cover information coming in U-M, or
information going out of U-M) is used when a party agrees to
disclose or accept confidential information with another party. For
example, when Acme Corp. wants to disclose secret nuclear
reactor designs with Dr. U-M Professor, for the purpose of starting
a discussion on a potential research collaboration between the
parties.
For OTT or ORSP’s Sample Standard One-Way NDA, go to:
http://orsp.umich.edu/policies/um/downloads/Standard One-Way
NDA.pdf
Is there more than one type of NDA?
© Office of Research and Sponsored Projects 2014
A “two-way” NDA is used when two or more parties
mutually agree to share their respective confidential
information with each other. For example, when Acme
Corp. wants to send technical specifications to Dr. UM
Professor, and Dr. UM Professor wants to send her
unpublished designs to Acme Corp.
*** Note: if a UM employee intends to share confidential or proprietary information
with an outside entity (an “outgoing” NDA), they should work with the U-M Office
of Technology Transfer (TechTransfer). ***
What if a company asks me to
send them an NDA? (Part 1 of 2)
© Office of Research and Sponsored Projects 2014
First, determine whether you plan to send
out confidential information (outgoing
one-way NDA), or will be required to
mutually share confidential information
(two-way NDA) with the company. If yes,
work with Office of Tech Transfer.
If the company simply wants to share the
company’s confidential information with
you (incoming one-way NDA), then…
● refer them to ORSP’s website, at:
http://orsp.umich.edu/policies/um/
nondisclosure.html
What if a company asks me to
send them an NDA? (Part 2 of 2)
● download OTT or ORSP’s
standard one-way CDA, at:
http://orsp.umich.edu/policies/um/n
ondisclosure.html
© Office of Research and Sponsored Projects 2014
How does OTT and ORSP
Manage requests for NDAs?
© Office of Research and Sponsored Projects 2014
1. reviews the underlying purpose of the NDA, and the characteristics
of the information to be disclosed
2. reviews the Unfunded Agreement (UFA) record in eRPM, to ensure
compliance with U-M policies (e.g. Conflict of Interest, etc.);
3. reviews the legal language of the NDA, to ensure compliance with
U-M policies and state and federal laws (e.g. Freedom of
Information Act, Confidential Research Investment and Information
Act, etc.);
4. negotiates acceptable language for the NDA, when appropriate and
necessary; and
5. signs the NDA to legally bind the University.
Signing authority for NDAs.
© Office of Research and Sponsored Projects 2014
Principal Investigators? No!
ORSP? Yes. TechTransfer? Yes.
Per U-M Standard Practice Guide (SPG) 601.24, only
authorized staff are permitted to legally bind UM in an
agreement (e.g. an NDA). For more information, see: http://spg.umich.edu/policy/601.24
*** Note: NDAs involving U-M personnel acting within the scope of their employment
must be signed by an authorized U-M official. ***
How do I involve ORSP?
© Office of Research and Sponsored Projects 2014
If an outside entity sends you an NDA (or, they sign UM’s one-way
NDA “as-is”), then you or your research administrator should route the
partially executed NDA to ORSP through the eResearch Proposal
Management system (aka “eRPM”).
The NDA must be routed as an UFA through eRPM (not as
a “Proposal Approval Form” aka “PAF”). New!
How do I involve OTT?
© Office of Research and Sponsored Projects 2014
Non-disclosure Agreements (NDAs) are often used to protect
the confidentiality of an invention as it is being evaluated by
potential licensees. NDAs also protect proprietary information of
third parties that University researchers need to review in order to
conduct research or evaluate research opportunities. U-M Tech
Transfer enters into NDAs for University proprietary information
shared with someone outside of the University or two-way NDAs to
enable both partners to share confidential information.
OTT does not use e-Research and UFAs to process requests for NDAs,
directly contact your OTT representative or OTT.
When to contact OTT or ORSP FOR AN NDA
© Office of Research and Sponsored Projects 2014
CONTACT OTT
One-way NDA to protect outgoing U-M confidential information
Two-way NDA to protect outgoing U-M and incoming third party
confidential information
CONTACT ORSP THROUGH e-RESEARCH (UFA)
One-way NDA to cover incoming third party confidential information
How do I use eRPM for an NDA?
© Office of Research and Sponsored Projects 2014
For more information, tips, and
training on how to route an NDA/UFA
through the eRPM system, go to:
● eRPM Training and Reference
Materials page:
http://www.umich.edu/~eresinfo/
erpm/training.html
● Use the eRPM UFA Quick
Reference Card for PI/Project
Teams
Additional Resources
© Office of Research and Sponsored Projects 2014
● For information generally about NDAs in the University research
setting, see the University Industry Demonstration Partnership
(UIDP) Contract Accords for University Industry Sponsored
Agreements, “Contract Accord 9: Confidential Disclosure
Agreements,” available at:
http://sites.nationalacademies.org/PGA/cs/groups/pgasite/
documents/webpage/pga_073004.pdf
● For U-M-specific information about NDAs related to research,
consult ORSP’s website:
http://orsp.umich.edu/policies/um/nondisclosure.html
Questions?
© Office of Research and Sponsored Projects 2014
● Contact your OTT or ORSP Project
Representative:
See the staff listings and organization chart
http://orsp.umich.edu/about
http://www.techtransfer.umich.edu/about/staff.php
● Contact the ORSP Training Manager:
Amanda Coulter
Wolverine Tower, First Floor, 1016
3003 South State St.
Ann Arbor, MI 48109-1274
e-mail [email protected]
Phone Number: (734) 936-1281
Fax: (734) 763-4053
Case Studies
© Office of Research and Sponsored Projects 2014
Grant agency informs you that your grant application will not be published, but
the reviewers are not required to sign an NDA.
Journal board informs you that the manuscript you submitted for review will
publish no sooner that 3 months, and the reviewers are not required to sign an
NDA.
A third party wants a copy of your provisional patent application but is unwilling to
sign an NDA.
UM and an engineering firm signs a two-way NDA for the parties to discuss a braking
system for a subway train. The conversation switches to a braking system for a jet
airplane.
Under a one-way NDA, you disclose confidential information to a third party on the
design of an electronic part for a mobile phone. Three years later, you discover that your
design, claimed in a UM pending patent application, was disclosed in a poster
presentation by a former employee of the third party to the NDA.