- Non-Disclosure Agreement
- Material Transfer Agreement
- Sponsored Research Agreement
- Memorandum of Understanding
- Interagency Cooperation Contract
- Subaward Agreement
- Collaborative Research Agreement
- Consortium Agreement
- Teaming Agreement
- Allocation of Rights
A Non-Disclosure Agreement (NDA), also sometimes referred to as a confidential disclosure agreement (CDA) or a proprietary information agreement (PIA), is a legal contract between at least two parties which outlines confidential materials or knowledge the parties wish to share with one another for certain purposes, but wish to restrict from generalized use.
In other words, it is a contract by which the parties agree not to disclose information covered by the agreement. As such, an NDA can protect non-public information of various types. NDAs can be “mutual”, meaning both parties are planning to exchange confidential information with the other, or they can be one-way, meaning that only one party will be disclosing confidential information.
In the United States, potentially valuable intellectual property rights may be forfeited if key research information about a potential UTD invention is disclosed prematurely. In advance of meeting with others to discuss collaboration on particular research topics, or to discuss the commercial aspects of UTD inventions, UTD researchers should make sure to get an NDA in place stating that the parties will not disclose/use designated confidential information.
Only persons with delegated signature authority can enter into a NDA on behalf of UTD. At UTD, NDAs must be submitted to either the Office of Sponsored Projects (OSP) (if the subject matter is potential collaborative research involving UTD resources) or the Office of Technology Commercialization (OTC) (if the subject matter is licensing of UTD owned technology) for review and signature.
Material Transfer Agreements (MTAs) are contractual documents used for the acquisition of various biological and research materials, and occasionally data, developed by nonprofit, government and private industry. Often these materials are a necessary component of a research project and are available only from a sole source, often industry. Industry may view their materials as important proprietary resources, and may want to assert ownership of any inventions made with those materials, or restrict publication of unfavorable results. Universities will want to ensure that MTA terms permit full dissemination of research results, and do not conflict with other University policies. Because of these differing views of MTAs, the necessary negotiations to accommodate the needs of both parties can be time consuming. The usual areas of negotiation relate to publications, use of the research results, and the ownership of the technology generated by the research. UTD is a state entity that receives a high proportion of its research funding from the federal government.
At UTD, OSP reviews and approves all MTAs. To expedite the process of negotiation, UTD investigators are asked to complete and sign an MTA intake form when requesting incoming materials or when UTD materials will be transferred outside the institution and submit it to OSP.
A Sponsored Research Agreement (SRA) is entered into when an outside institution, typically industry, provides funding to UTD to support a specific research project with an expectation of receiving reports or certain deliverables. While initial discussions between industrial sponsors and UTD faculty or senior research staff occur in a variety of ways, projects should not be undertaken unless a carefully defined research proposal, including a budget, has been submitted through UTD internal review procedures and a funding agreement has been negotiated and signed by the authorized representatives of both parties.
OSP negotiates the terms of the SRA, ensuring compliance with UTD and UT System policies. SRAs typically include terms governing the following:
- Scope of Work and Budget for the project
- Reporting or deliverable requirements
- Payment terms and invoicing schedules
- Publication rights
- Intellectual property generated from the project
- Use and treatment of confidential information disclosed during the project
- Compliance with federal export control laws and other regulations
- Termination of the agreement or project
- Choice of governing law
- Other items as appropriate for the specific project
A Memorandum of Understanding (MOU) is a contract between two or more parties planning to create a research or educational partnership. The MOU outlines the type of relationship that will be created, the objective for the relationship and the responsibilities of each party. The MOU is not a legally binding agreement and therefore should not address formal plans for compensation, confidentiality, or intellectual property and licensing rights. These types of agreements are sometimes referred to as “gentlemen’s agreements” and are most usually entered into between institutions of higher education, with individuals, or with local school districts, and can sometimes be a requirement of a grant proposal submission or grant award. The planned activity may or may not come to fruition as described in the MOU, however there is no penalty for failure.
An Interagency Cooperation Contract (“IAC” or “ICC”) is a written agreement between agencies of the State of Texas under which goods or services are provided. Most IACs involving UTD are with another component institution of The University of Texas System, but they can also be issued directly by the State. An IAC must specify:
- The kind and amount of services to be furnished,
- The basis for computing reimbursable or fixed costs, and
- The maximum cost during the period of the contract.
All IACs for research or research related services are reviewed, negotiated, and finalized by the Office of Sponsored Projects.
A subaward is an agreement with a third-party organization performing a portion of a funded UTD research project or program. The terms of the relationship (sub-grant/subcontract) are influenced by the prime agreement, and all subawards must be monitored to ensure that the subrecipient complies with these terms. A subrecipient works collaboratively with the prime award recipient to carry out the scope of work as proposed.
Just because another entity is involved in carrying out a sponsored project does not mean that a true subrecipient relationship exists. Since it is sometimes difficult to tell the difference between a subrecipient and a vendor, it is easy to confuse the two. This can lead to problems managing a sponsored project so it is important to ascertain if the work to be carried out meets the definition of a subaward at the proposal stage.
Questions to ask before including a subaward in a proposal:
- Does the entity commonly provide these goods and/or services as part of their normal business operations?
- Does the entity provide similar goods and/or services to other purchasers?
- Does the entity compete with comparable entities to provide the same goods and/or services?
- Are the goods and services being provided by the entity secondary to the central purpose of the project?
- Is the entity’s work carried out according to the Prime’s specifications using standard operating procedures?
If the answer to any of these questions is “yes,” the entity fits the profile of a vendor and a subaward will not be the best solution. If a vendor relationship is required remember that indirect costs will need to be charged on the entire amount of the transaction. If you are unsure which type of relationship is most appropriate, please contact your Grants Specialist.
Collaborative Research Agreements (CRAs) are contracts between UTD and one or more organizations that are cooperating in the conduct of a research program. The agreement describes the actions that each organization has agreed to undertake, and defines the obligations each party has to the others participating in the collaborative research effort.
Collaborative Research Agreements may include terms governing the following:
- Scope of work to be conducted
- Schedules and deliverables
- Publication of the research results
- Intellectual property arising from the research collaboration
- Care of data and confidential information exchanged during the research
- Transfer of materials among the collaborating organizations
- Compliance with export control and other laws and regulations
- Rights and procedures to terminate the project
The process for drafting, reviewing, and negotiating the CRA can be brief or lengthy, depending upon the complexity of the proposed collaborative program and what the participants expect to obtain from the CRA.
A Consortium Agreement is a contract that enables multiple sponsors (usually non-federal organizations) to participate together in supporting research and equally share the outcomes of the research. However, having more than one sponsor involved in a research project does not automatically convert the program into a consortium.
Consortium Agreements are similar to Sponsored Research Agreements (SRAs) involving a single sponsor, except that Consortium Agreements provide for the sharing of obligations, rights, and benefits among all consortium members.
Consortium Agreements include terms governing the following:
- A general description of research to be conducted under the Consortium’s funding (Some, but not all, consortia provide options for the member to fund sole-sponsor projects)
- Cost of membership, with payment obligations and schedule
- Management of the consortium and members’ role in governance
- Publication of the consortium’s research results
- Intellectual property rights arising from the consortium’s research
- Compliance with export control and other laws and regulations
- Rights and procedures to terminate the consortium or membership
A Teaming Agreement (TA) is a binding agreement between one or more organizations that are joining together to propose a new cooperative research project to a prime sponsor — often a federal government agency — in response to a competitive request for proposal (RFP). The lead proposing organization usually drafts the TA.
TAs specify the RFP which will be addressed by the team, the objectives for each member of the team, the proposal to be generated by the team, and the actions and deliverables required from each party.
TAs require that if the RFP is awarded to the lead proposing organization, that organization will issue a subcontract to UTD for UTD’s share of the proposed research unless the prime sponsor specifically disallows UTD’s participation.
The resulting proposal may or may not win the award; under a TA, UTD receives no funding for its proposal preparation efforts.
The time period for reaching agreement on a TA is usually driven by the proposal submission deadline. TAs typically expire when the prime sponsor selects or rejects the team’s proposal.
Allocation of Rights
An Allocation of Rights (AOR) document is a non-monetary agreement establishing the rights between parties to existing (background) and future (foreground) intellectual property. Generally, IP will be discussed in funding agreements in conjunction with the rest of the terms and conditions. When IP rights are necessary to establish prior to an award document, an AOR is used. An AOR typically grants each party use of project IP nonexclusively and without compensation for the performance of the project. It also contains an option to negotiate an exclusive license in a separate agreement. If you are submitting an SBIR or STTR proposal, an AOR will be required before an executed letter of commitment is provided to the company. This is necessary to ensure all Background IP is identified and protected, while also establishing rights to Foreground IP. Since SBIR and STTR Proposals are federally funded, the Bayh-Dole Act set forth at 37 CFR 401 will be used which states what we invent, we own, what you invent, you own and jointly created inventions are jointly owned.