Information for Prospective Licensees
Information for Research Discussions involving Confidential Information: Confidential Disclosure Agreements (CDA's) and Nondisclosure Agreements (NDA's)
Florida State University encourages its researchers (faculty, staff, and students) to partner with outside companies for collaborations. If a researcher wishes to engage in discussions that involve proprietary information then we require a confidential disclosure agreement (CDA) to be in place prior to those discussions. CDAs are sometimes called nondisclosure agreements (NDA) or proprietary information agreements (PIA). FSU is a state institution and is subject to University policy and State of Florida Law; therefore, we prefer to use our own standard CDA.
Because of Florida State University's status as a state institution, typical outside confidentiality agreements and non-disclosure agreements contain terms that the University cannot accept. If a company insists on using their own proposed CDA, the terms will need to be carefully reviewed and negotiated by the FSU Office of Research before conversations can take place.
Some areas of concern are:
- Receiving Proprietary Information
- Term of Confidentiality
- Binding Arbitration
- Dispute Resolution
- Applicable governing laws
- Export control and ITAR and EAR clauses
- Notices and Recipients of Proprietary Information
- Glossary of Terms
Receiving Proprietary Information
To comply with University policy and state and/or federal law anything we receive that is deemed to be proprietary or confidential information (including documentation) must be stamped or otherwise marked "Confidential". We normally do not agree to limit the disclosure of proprietary information to full-time, regular employees because we don't want to limit our ability to work with students.
Term of Confidentiality
CDAs/NDAs/PIAs are usually for a period of one year, with a continuing obligation to keep information confidential for an additional period of three (3) to five (5) years.
We cannot agree to injunction relief as a result of irreparable damages.
FSU cannot agree to a binding arbitration requirement.
FSU can agree to resolve disputes via informal processes, including mediation or non-binding arbitration, or through legal process in Florida's courts.
Applicable governing laws
As a Florida state institution, we cannot agree to be governed by another state. We can however, agree to be silent as to governing law.
Export control and ITAR and EAR clauses
- International Traffic in Arms Regulations (ITAR) is a set of US Government regulations that control the export and import of defense-related articles and services on the United States Munitions List.
- Export Administration Regulations (EAR) is a commerce control list administered by the US Department of Commerce that regulates the import and export of "dual use" technology and some defense technology.
Any material deemed to be Export Controlled needs to be clearly marked EXPORT CONTROLLED. FSU reserves the right to refuse export controlled information. FSU is a public state university and desires to do work that is fully publishable and considered fundamental research. As a research university FSU qualifies for the fundamental research exclusion which is applicable both to export control laws and the ITAR.
FSU will not accept any contract that says it "may" be subject to such laws. FSU needs to know from the contractor whether the technology/information/data, or the use of the data is controlled. If it is export controlled the University will need to decide whether to accept the work or not because such restrictions are contrary to university policy regarding fundamental research.
Accepting export controlled work means that FSU must insure that no foreign nationals work and/or access any information and must prove a security process that ensures compliance. Alternatively, the export controlled work may need to involve foreign nationals, in which case the University will seek to obtain appropriate review and approval from the federal agency involved prior to initiating the work activities.
As a research University we do not desire to restrict foreign national access to technology, data, or information.
Notices and Recipients of Proprietary Information
The Vice President for Research should be the designated party for receipt of administrative notices relating to the CDA. The faculty member(s) that will be receiving the proprietary information should be identified as the contact for information exchanges.
Florida State University cannot accept liability for any inadvertent disclosure of proprietary information.
Glossary of Terms
- Option Agreements- Sometimes an exclusive option agreement precedes a full license. In this manner, the company does not need to commit to the license and related performance terms until it has a chance to convince itself of the market potential. Upon payment of an option fee, the company is granted a time-limited option to acquire a license under negotiated terms. During the option period, the company has an exclusive opportunity to understand the technology and its market potential as well as work with the University to create a product. At any time during the option period, a formal license can be signed.
- License Agreement- FSU and its researchers will provide rights to use a selected technology for research and development, product development, manufacture, use and sale.
- Degree of Exclusivity- The company can acquire exclusive or non-exclusive rights to the technology to use it in defined markets. In the former case, one license is granted in each market. In the latter case, FSU may license a number of companies.
- Field of Use-The rights are restricted to the market applications where the company already has a track record or it has the resources to launch new products or services based on technology. Rights will be provided for named markets. Rights to grant sub-licenses to others can be provided under both types of licenses under mutually agreeable terms.
- Improvements and New Discoveries- As commercialization proceeds, the FSU researchers may make improvements to the technology. Normally, these are made known to the company which finances the work and may be included in a license for no additional compensation.
- Performance Milestones- Depending upon the level of exclusivity negotiated, FSU will require commitments for the company in the form of performance milestones defined in terms of measurable events within the company's own commercialization plans.
- Compensation to IP Owners- Compensation will be a function of the performance milestones, the degree of company commitment and the degree of exclusivity granted, There will be a license sign-up fee with royalty rates negotiated on the basis of industry standards. Royalty rates are expressed as a percentage of sales of the company or its sub-licenses in stated markets.
- Collaborative activities- Continuing collaborations between the company and FSU researchers and encourage during the commercialization phase and usually take the form of a research contract to perform work at FSU as part of the corporation's commercial plans. The research contract budget includes allowances for both direct and indirect costs.
- Patent activity- If the technology is covered by FSU patents, these will be licensed to the company, usually with ongoing maintenance costs paid by the company. The company may seek additional patent coverage, and FSU will participate in all aspects of the application. If there is evidence of a patent infringement, FSU will collaborate with the company but expects the company to lead and pay for any necessary action.
- Indemnification and Warranties- FSU expects the company to indemnify the University from and negative repercussion of the company's activities in the marketplace and may request that product liability insurance be in place. FSU is unable to provide any warranties with respect to suitability for the markets, freedom from infringement of third party patents, etc.