UNIVERSITY OF ALABAMA AT BIRMINGHAM (UAB)

CONTRACT LANGUAGE GUIDELINES FOR CONFIDENTIALITY OR NON DISCLOSURE AGREEMENTS

UAB’s Office of Industry Engagement (OIE) is responsible for the overall review and execution of confidentiality or non-disclosure agreements (CDAs) for sponsored research and other sponsored activities of the university. These guidelines provide information about legal issues particular to UAB as public corporation of the State of Alabama and other UAB contract preferences. A contracting party that modifies its CDAs to comply with these guidelines prior to submission will expedite UAB’s review and execution process. CDAs are reviewed by UAB’s Office of Counsel for appropriateness of legal terms. In an effort to further expedite the process, if a contracting party can agree to the terms of one of UAB’s template CDAs, UAB will sign the agreement without further review. The template CDAs can be found at the following links:

  1. UAB Unilateral Confidentiality Agreement when UAB discloses(Final 061715)
  2. UAB Unilateral Confidentiality Agreement when UAB receives (Final 082015)
  3. UAB Mutual Confidential Disclosure Agreement (Final 082015)
  4. UAB Expedited Confidentiality Agreement (052815)

When the project being contemplated requires UAB to disclose proprietary information, UAB will require reciprocity in the CDA to cover proprietary information provided by UAB to the other contracting party.

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  • NAME: Please use UAB’s correct legal name: “The Board of Trustees of the University of Alabama for the University of Alabama at Birmingham.” Please also describe UAB initially as “a constitutionally created public corporation of the State of Alabama”, where appropriate and applicable.
  • INVESTIGATORS: Please do not name the principal investigator (PI) or other UAB employee as a party to the CDA. Most employees of UAB do not have signatory authority to bind the university and can only attest that he/she has read and understands his/her obligations under the CDA.
  • DISCLOSURE AND ACCESS: UAB will agree to limit disclosure of a contracting party’s proprietary information to such of its employees who have a need to know such information. UAB’s employees are bound by the terms of their employment to hold in confidence proprietary information provided by a contracting party. UAB will not undertake to execute separate contractual obligations with each such employee and all such requirements should be deleted.
  • CONFIDENTIALITY: UAB acknowledges its obligation to hold in confidence proprietary information provided by a contracting party and will agree to take reasonable security measures. As a public corporation, however, the university is subject to the State of Alabama’s Public Records Laws that could require the disclosure of information relating to the CDA, such as the existence of a CDA. UAB’s position is that confidential information owned by a contracting party is protected from disclosure pursuant to public policy exemptions, and UAB will use its best efforts to protect a contracting party’s confidential information from disclosure as appropriate under the law. UAB prefers not to receive trade secrets. In the event trade secrets are included in confidential information, UAB requires receipt of notice that such trade secret be properly marked confidential and indicates that it is a “trade secret” if received by UAB. UAB will not agree to perpetually maintain trade secrets as confidential. In general, UAB will agree to maintain the confidentiality of information provided to the university for a term up to 5 years after termination of the applicable CDA.
  • EQUITABLE RELIEF: UAB acknowledges that irreparable harm may occur to a contracting party if the obligation to hold in confidence proprietary information provided by such contracting party is breached. However, UAB will not agree to waive the judicial requirements, including but not limited to proving actual damages, upon which equitable relief is granted but will waive the requirement that a bond be posted with the applicable court.
  • INTELLECTUAL PROPERTY: UAB acknowledges that it should not benefit from an intentional breach of its obligations under a CDA and will grant ownership to a contracting party of any invention made by UAB or its employees arising from a breach of its obligations under a CDA. However, UAB will not address in a CDA ownership of inventions arising from future relationship between the parties, such as in the performance of a clinical investigation. UAB reviews intellectual property ownership terms on a case-by-case basis and prefers to do so with a thorough understanding of the work contemplated and at the time when the contract relating to the clinical investigation is being negotiated by the parties.
  • GOVERNING LAW: UAB’s preference is for the CDA to be governed by Alabama law but can agree to remain silent regarding governing law. UAB is a state agency and cannot waive sovereign immunity conferred on it by the Alabama Constitution. Accordingly, UAB cannot execute a CDA subjecting the university to the laws or legal process of a jurisdiction other than the State of Alabama or requiring the parties to settle disputes through binding mediation or arbitration.
  • INDEMNIFICATION: UAB is a state agency and cannot waive sovereign immunity conferred on it by the Alabama Constitution. UAB can indemnify “to the extent allowed by Alabama law” for third party claims that are: 1) caused by UAB’s failure to comply with contractual terms; or 2) caused by the negligence of UAB or its employees.
  • “WARRANT”: Because the word “warrant” may imply an obligation of UAB to indemnify a third party for any loss if the warranted fact proves untrue, which UAB cannot do as set out in the previous section, please replace the term “warrant” in any proposed agreements with “certifies” or “covenants” in order to expedite review and processing of the CDA.
  • LEGAL EXPENSES: As a public, non-profit educational institution and a public corporation of the State of Alabama, UAB cannot bear financial responsibility for any other person’s legal expenses, including any provision requiring UAB to pay legal expenses incurred by a contracting party arising out of or in connection with the CDA. Consequently, all references to payment of such expenses should be deleted.
  • INSURANCE: UAB maintains a formal liability self-insurance program (general liability and professional liability) to cover claims against UAB and its employees. UAB will extend evidence of its liability coverage, if requested. UAB requires a contracting party to maintain insurance coverage that is adequate to cover the risks and potential liabilities that might arise from a CDA in which both parties are disclosing information. UAB may require evidence of a contracting party’s insurance coverage.
  • USE OF NAME: In general, UAB does not permit the use of its name or any trademark, or trade name owned by it, or any abbreviation, simulation or contraction thereof, in advertising, publicity, news releases, reports or any promotional activities without its express prior written consent unless such use is required by law. UAB will agree to similar restrictions on its use of a contracting party’s name, trade name and the like except it does require the ability to use a contracting party’s name for purposes of institutional reporting, mandatory conflict of interest disclosures, and federal and other applications for funding.
  • RETURN OR DESTRUCTION OF CONFIDENTIAL INFORMATION: UAB will return or destroy proprietary information upon the request of a contracting party. UAB will provide, upon request, the necessary certificateto a contracting party if proprietary information is destroyed. UAB also requires that it be allowed to retain an archival copy of the proprietary information provided to it by a contracting party for compliance purposes.
  • TERMINATION: Any and all obligations under a CDA must have a defined term limit and not be perpetual. Consequently, UAB prefers all CDAs to specify a term for disclosure or discussion. A term of one to two years is acceptable. If the parties decide to proceed with a transaction or clinical study as contemplated by the CDA, the terms of the executed subsequent agreement will supersede the CDA.

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For additional information please contact:

The University of Alabama at Birmingham

Office of Industry Engagement

(205) 934-3980

UAB Contract Language Guidelines1December 17, 2015

for Confidentiality or Non-Disclosure

Agreements