Non-Disclosure Agreement Processing
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 UT invention is disclosed prematurely. In advance of meeting with others to discuss collaboration on particular research topics, or to discuss the commercial aspects of UT inventions, UT researchers should make sure that the parties have an NDA in place stating that the parties will not disclose/use designated confidential information.
Processing NDAs At The University of Texas at Austin
Only persons with delegated signature authority can enter into a NDA on behalf of UT Austin. At UT Austin NDAs must be submitted to either Office of Sponsored Projects (OSP) (if the subject matter is potential collaborative research involving UT resources) or Office of Technology Commercialization (OTC) (if the subject matter is licensing of UT owned technology) for signature.
- Getting NDAs Signed by UT Austin
Faculty and staff at UT Austin, as well as industry, can streamline the process of executing an NDA with UT Austin by submitting their NDA to OSP or OTC, as appropriate, with the following information completed: names and addresses of the parties and the individual contact persons, purpose of the NDA, description of the Confidential Information, and whether or not any export controls apply to the Confidential Information. Providing this minimum amount of information allows the staff at OSP and OTC to facilitate processing the NDA.
Questions related to Export Control issues related UT personnel’s receipt or delivery of confidential material should be directed to the Export Controls Officer, Office of Sponsored Projects at 512-471-6424 or firstname.lastname@example.org.
When providing UT's Universal NDA to potential exchange partners, download and send a copy of Terms and Conditions of Non-Disclosure Agreement.
- Office of Sponsored Projects
Where a faculty member wishes to share information related to possible research efforts, they should fill out UT's Universal Non-Disclosure Agreement and then forward the completed Form to OSP@austin.utexas.edu. OSP will then review the completed form and work with the faculty member and the research partner to facilitate the exchange.
OSP negotiators are glad to assist UT faculty in the NDA process where the confidential information is the subject matter of possible collaborative research.
- Office of Technology Commercialization
- May I sign a Non-Disclosure Agreement (NDA) on behalf of the University?
No, if you do not have a letter from the President of the University, or his designate, delegating you with signature authority you cannot sign NDAs on behalf of the University. University personnel may sign Non-Disclosure Agreements acknowledging their obligations under the NDA, but for the agreement to be legally binding, the agreement must be signed by university personnel with signature authority. The Director, Associate Director and Assistant Director at OSP have university authorization to sign NDAs. Forward your NDA to OSP for review and signature.
- Is a Confidentiality Agreement the same type of agreement as a Non-Disclosure Agreement?
Yes, Non-Disclosure Agreements have many different names – Confidentiality Agreement, Proprietary Information Agreement, etc. The purpose of these agreements is the same – to guard against disclosure of confidential or proprietary information of one or both of the parties to the agreement.
- Can a Non-Disclosure Agreement have more than two parties to it?
Yes, a Non-Disclosure Agreement can have several parties. Note that a Non-Disclosure Agreement with several parties may take more time to negotiate because each party may have concerns or requirements for protecting confidential information. In addition, the signature process for each party differs and the amount of time needed to obtain signatures may delay the exchange of information.
- When a Non-Disclosure Agreement has been negotiated for my project, should I obtain signatures from all personnel working on the project that indicate they have read the Non-Disclosure Agreement and understand their obligations under the Agreement?
Yes, all university staff, faculty, and students with whom you intend to share the confidential information should be given a copy of the Non-Disclosure Agreement and should sign the NDA acknowledging they have read and understand their obligations under the NDA.
If you intend to share the confidential information with non-university individuals or entities1then those individuals or entities should a) have an separate NDA in place with UT which extends to the subject confidential information, or b) be named as a party to the same NDA covering the subject confidential information.
- I am disclosing confidential information to a third party. Does the University have any Non-Disclosure Agreement templates I can use?
Yes, the University has a Universal NDA template which is applicable for multiple scenarios. You can go to our Forms & Templates page to obtain the templates.
If you forward the UT Universal NDA form to a third party, download and send a copy of Terms and Conditions of Non-Disclosure Agreement along with the NDA form. The process of negotiating a NDA can be facilitated if the third party considers the Key Elements document prior to responding to UT’s NDA.
If the third party requires hard copies, ask them to sign at least two copies of the NDA so that both parties can retain one fully signed original copy.
- Can NDAs be executed by fax or scanned and emailed, instead of the typical exchange of two original fully signed copies by US Mail or overnight courier?
Yes, the University will accept faxed signatures or scanned signatures on NDAs from the authorized signatories of the other party(ies). The University will return a fully executed copy to the party via the same format (fax or scanned/emailed).
- How long does it take to negotiate an NDA?
Typically, it should not take long to negotiate a NDA; most agreements can signed by the University in less than a week. However, if the NDA contains terms and conditions that are not acceptable, negotiation must occur. Clauses that may require negotiation and potentially create a delay in signature include:
- governing law (if not Texas)
- indemnification (if the Constitution and the laws of the State of Texas are not referenced)
- intellectual property (should not be in an NDA since the purpose of the agreement is to protect confidential information of a party)
- overly broad definition of confidential information
- requirement to label confidential information not included, especially if exchanged verbally or visually
- I am attending a meeting off campus and, when I got here, I found out that one of the requirements of the meeting is to sign a Non-Disclosure Agreement before any information will be provided to me. What should I do?
If the parties to the NDA include the University, you should send the NDA to OSP immediately for review. You can either fax it or email it. The OSP fax number is 512-471-6564; our office email address is email@example.com . Call OSP at 512-471-6424 to let the office know you are sending a NDA agreement for emergency review. Leave a phone number where we can reach you. OSP will give the agreement top priority and will sign it as soon as possible if the terms are acceptable.
In the alternative, you may download the UT Universal NDA form and present it to the party, or parties, for signature. If a signed copy of the UT Universal NDA is submitted to OSP without edits, the NDA can be signed by OSP immediately.
- I have to exchange confidential, export controlled information with a third party. Do I need to do anything special?
Yes, both University-owned and third-party owned export controlled technology require additional steps:
University-owned export controlled technology: If you are exchanging University-owned, confidential, export controlled information or technology with a third party, you should provide a description of the information or technology (see Section 4 of the UT Universal NDA). OSP's Export Control Officer, David Ivey, at 512-475-7963 or firstname.lastname@example.org will help you determine which export regulation controls the information/technology. OSP will then reference the export control information in the NDA and ask the other party to review the proposed export controls for acceptance.
Third Party-owned export controlled technology: If a third party wants to share their export controlled information with you, the party should provide a description of the information or technology (see Section 4 of the UT Universal NDA). You will most likely be able to receive the information from the third party if you are a US citizen or permanent resident. However, if you are not a US citizen or permanent resident and/or you intend to share the confidential information with foreign persons, such as foreign graduate students, you should provide the following information to OSP’s Export Control Officer, David Ivey, at 512-475-7963 or email@example.com about the foreign person(s) who will have access to the export controlled technology:
- Birth date
- Place of birth
- Country of citizenship
- Country of origin
OSP may be required to submit a deemed export license application to the U.S. Department of Commerce or to the U.S. Department of State to be able to provide access to the export controlled technology to the foreign person(s). The need for a license will be dependent on the export control status of the technology and the country of citizenship of the foreign person requiring access to the information. Note it can take months to obtain licenses for deemed exports to foreign persons.
The necessary contact information for a Party’s duly authorized representative should be provided as shown in Section 1 (note that the individual’s email/phone is useful, but not required).
- If a Party requires more than one person have primary responsibility for receipt/delivery of Confidential Information for an NDA (usually associated with separate locations within the company), where should that person’s name be listed?
Section 2 of the UT Universal NDA. It is contemplated that each party will have only one Contact Person with primary responsibility for receipt/delivery of Confidential Information, and that person's name will be provided in Section 2. However, if a party desires to designate more than one individual with that responsibility then Section 2 will be the place.
Exhibit B of the NDA also identifies any additional UT employees who will have access to the Confidential Information, and provides that the individual read and sign the NDA along with the PI. The NDA does not require UT's exchange partner(s) to have their contact person(s) and employees sign the NDA. However, there have been a few companies that have implemented this after seeing our form.
NOTE: In addition to the names of the Parties and Contact Persons, Section 4 should be completed prior to submission to the Office of Sponsored Projects (OSP) for signature. If you need assistance in completing the Export Control information you can contact the David Ivey, Associate Director, Export Controls Officer in OSP (512-475-7963 or firstname.lastname@example.org).
- Can we later add additional UT personnel to the list of persons having access to the Confidential Information?
Yes, with approval of OSP depending on whether the Confidential Information is export controlled.
Additional persons must sign the signature page of the NDA acknowledging they have read and understand their obligations under the NDA. Section 5 of the NDA allows signatures in separate counterparts so any additional executed signature page(s) should be forwarded to OSP to be included as part of the original NDA (and allow OSP to provide our exchange partner with the executed counterpart(s)).
If the Confidential Information is export controlled, and the additional personnel are not US citizens or permanent US residents, you will need to confer with OSP’s Export Control Officer prior to them signing the NDA or being allowed access to Confidential Information. If the additional personnel are US citizens or permanent US residents, they may sign the signature page of the NDA acknowledging they have read and understand their obligations under the NDA. Any additional executed signature page(s) should be forwarded to OSP to be included as part of the original NDA (and allow OSP to provide our exchange partner with the executed counterpart(s)).
- Is the Export Control language in Section 10 of UT’s Universal NDA really necessary in an NDA?
Yes. By its very nature a non-disclosure agreement does not allow for the release of confidential information; i.e., the information is not in the public domain. Thus, the fundamental research exclusion is not applicable to the information. If it is determined that the proprietary information/data/technology is "controlled" (found on the Commerce Control List or the U.S. Munitions List), then it is possible an export license may be needed before the controlled information may be disclosed to a foreign national. If it turns out the information to be exchanged is controlled, but will not be disclosed to a foreign national, a Technology Control Plan (TCP) may be needed to articulate the procedures that will be followed to protect the information from access by foreign nationals.
Compliance with export control regulations is a priority at UT Austin due to the breadth of research conducted in our many research facilities. UT Austin has recently added an Exhibit B to the NDA in which UT faculty acknowledge their obligations under the NDA, including compliance with export control regulations. UT Austin now requires that Exhibit B, or its functional equivalent, be incorporated into every NDA to which UT Austin is a party.
If you need assistance in completing the Export Control information you can contact David Ivey, Associate Director, Export Control Officer in OSP (512-475-7963 or email@example.com).
- Do we have to provide the Export Control Classification Number (ECCN) or the US Munitions List (USML) category(s) for each disclosure of Confidential Information during the term of the NDA? This requirement seems to place an undue administrative burden on our technical staff.
The intent of the ITAR/EAR classification language is to provide a mechanism to alert the Parties to potential export control issues, and allow the parties to address these issues in advance. If the information/data/technology is identified by an ECCN on the Commerce Control List or listed under a category in the ITAR USML, then it is possible an export license may be needed before disclosure to a foreign national. The determination whether or not an export control license is necessary needs to be completed prior to any disclosure under the NDA.
For example if the parties initially identify the Confidential Information as Export Controlled (in Section 4) and can confirm that only U.S. citizens or permanent residents will have access to the Information, then Section 10 might be modified with language such as the following:
"The Parties agree that where Confidential Information is subject to ITAR or EAR, or if there is a Determination Pending as to applicability (as shown in Section 4 of the NDA), said Confidential Information shall be disclosed only to individuals who are U.S. citizens or who have. permanent resident status."
Contact David Ivey, Associate Director, Export Control Officer in OSP (512-475-7963 or firstname.lastname@example.org) for assistance in export control matters and whether modification to the export control language in Section 10 of the NDA is appropriate.