“Confidential Information” can be simply defined as information which is not in the public domain. In order to protect such information, a Confidentiality Agreement (also known as a Confidential Disclosure Agreement “CDA” or a Non-Disclosure Agreement “NDA”) can be put in place, to oblige the parties partaking in discussions to keep anything disclosed between them a secret. Before holding discussions with third parties, it is strongly recommended that an NDA is concluded, to protect any sensitive or valuable information which may be disclosed. Such information may include (but is not limited to) know-how, unpublished results, ideas, data etc., and could be information which is the subject of future patent applications, or information which is not capable of registration but which needs to remain secret. Confidentiality obligations can also be included in other contracts, such as collaborative research agreements.
Without an NDA or appropriate confidentiality obligations in place, there is a risk that confidential information belonging to the University could be publicly disclosed by a third party or used in an unauthorised way. Managing confidential information and its disclosure is an important consideration during the course of a research project, as an uncontrolled disclosure of valuable information could result in commercial opportunities being lost, or the impact of academic publications being reduced. However this should not prevent the publication by the University of the results of a research project in a timely manner, to meet our charitable objectives.
The University has its own suite of template confidentiality agreements, for one-way, two-way and multi-party disclosures. The University has given certain authorised persons within each Faculty the authority to issue, and review changes to, the University’s template NDAs. For information on who you should contact when you require a NDA, please see the RIS Contracts Team’s “Devolved Procedures” in the first instance. Then if you are still unsure of who you should contact, please get in touch with the relevant Contracts Team member who will be able to advise you on this.
Please note that NDAs may only be signed on behalf of the University by an authorised signatory, in line with the University’s Scheme of Delegation, and should not be signed by staff or students.
Intellectual Property (IP)
What is IP?
IP can be defined in many different ways. According to the World Intellectual Property Organisation, IP “refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.” Simply put, IP can be described as “knowledge and its creative application” which could be a method of doing something or the creation of a tangible product – ultimately it will be the expression of one or more ideas for use in particular circumstances. Some examples of what constitutes IP include an original article or journal publication, a novel method or process, a bespoke piece of software or dataset/database. Note that this means IP is more than just ‘patentable inventions’, and almost all research projects will therefore use, or generate, some IP.
What is the University’s position on IP?
The University’s IP Policy sets out the University’s position regarding the ownership of IP developed by its staff and students, together with the procedures in place for commercialisation of University owned IP.
IP in its various forms is one of the main outputs of the University’s research activities. As a charitable body, the University must ensure that IP which its staff generate is protected so that the maximum benefit (including public benefit and academic impact) is achieved from the University’s research.
Some forms of IP can be officially protected (for example, inventions can be patented), and the University is keen to ensure that commercially valuable IP is appropriately protected. The University’s Commercialisation Team identify, evaluate and develop commercial opportunities arising from research activity at the University – if you believe that you have a commercial opportunity, please get in touch with the Commercialisation Team who will be able to advise you on this.
The RIS Contracts Team will assist with the review and negotiation of intellectual property provisions in agreements. Such provisions will set out ownership and usage rights of the parties in relation to (i) pre-existing IP (background IP) which may be required in the performance of the project and (ii) any arising IP (foreground IP) which is created during the course of the project. The IP ownership arrangements with third parties will vary depending on the context of the research, and may be subject to external funding terms. The University must strive to realise the best value it can from granting access to arising IP. A primary charitable purpose of the University is to promote education through teaching and research, and therefore the University will almost always want to secure the right to use the results and arising IP from a research project for its further research and teaching purposes.
The University is keen to ensure that academic staff and students are able to publish the results of their research, for example in academic journals/periodicals, or in a thesis for a higher degree. This is for two reasons:-
- the University’s charitable objectives require that it acts for the public benefit; publication of research which is of benefit to society achieves this goal; and
- publication of research is beneficial to the careers and development of the University’s staff and students, and enhances the University’s reputation.
Severe publication restrictions or complete vetoes on publication should therefore be avoided. The RIS Contracts Team will therefore seek to protect the University’s right to publish the results of its research and ensure that research contracts contain a suitable procedure for publication. This procedure will account for the potential commercial value/sensitivity of the research results, and will usually include a mechanism to allow for short delays to publication to enable the parties to seek appropriate IP protection (i.e. to allow a patent application to be lodged) and for sensitive or confidential information to be removed from the publication.
The University needs to price the research activity services it provides, ensuring that this accurately reflects the value of the research to the funder. The price of a piece of research will depend on the nature of the research activity and will also determine the contractual terms, including the key terms described above, to be agreed between the parties involved in the research project. Discussions regarding pricing must take place before any work is undertaken on a research project and it is therefore important to contact your Faculty Research and Innovation Office as soon as possible, who will provide advice and assistance on pricing in line with University guidance.
When undertaking a research activity, it is expected that the parties involved use their reasonable efforts to perform the work and complete the research project that has been agreed. However, as research is experimental by its nature, the University cannot provide any promise that the work it carries out will lead to any particular result or outcome, or that the success of the work is guaranteed. Similarly other contractual promises, for example that work will be completed by a certain date, must be carefully considered to ensure they do not carry an undue level of risk.
The University, as a charitable body, has a duty to minimise its risk and exposure and to protect its assets. This can be achieved in a number of different ways, including limiting the University’s potential financial liability under a contract. The RIS Contracts Team will therefore seek to ensure that the level of exposure contained in a contract is appropriate in the context of the research activity whilst still recognising the University’s responsibilities. The University also seeks to protect its staff and students. One way it does this is by entering into agreements on behalf of its staff and students, to protect individuals from incurring any personal liability. This is one reason it is important that University personnel do not enter into research agreements in an individual capacity (unless necessary in the circumstances) and do not sign agreements on behalf of the University, which should only be signed by authorised signatories in accordance with the University’s Scheme of Delegation.