Comments on Legal Issues from the Director of the Center for Industrial Mathematics

The academic researcher, whether student or professor, must publish. Private companies sometimes encourage publication for various reasons, sometimes can accept publication under some non-disclosure agreement, and other times feel their product could be compromised by publication. I will explain briefly how we deal with these three situations to the satisfaction of all.

For the best interest of the private corporation as well as the university researchers, it is advisable to develop a written agreement. Even under the most amicable arrangement, such a document spells out basic rights and responsibilities for both parties.

It is my experience that a majority of companies have the desire to keep some aspects of their work secret, yet do not mind (or benefit from) free publication of other parts of the work. For this situation the sample non-disclosure agreement (below) seems to be ideal. It protects the academic researcher's rights to publish within reason, while giving confidence to the industrial counterparts.

We find that contract administrators tend to accept the non-disclosure agreement outlined below, which is to be customized for the individual student and also for the professor(s) advising the student. Faculty members serving on the examining committee would be expected also to sign the document. At UWM the legal entity is the board of regents, represented locally by signature authorities of the Vice Chancellor or Dean of the Graduate School. A single such document, with the UW Board of Regents as the named party for UWM, suffices for all the faculty members involved.

Under the last circumstance, in which the industrial company desires total non-disclosure, there is no way for a university employee to carry out measurable research. The only remedy in this situation is for the researcher to be adequately compensated.

At UWM we do not require a Master's Thesis for the Industrial Mathematics degree, which would have to be submitted to the library (i.e., nominally published). Instead, a Master's Project is required, which essentially solves any problems with non-disclosure.

What follows is a text version of a non-disclosure agreement the UW-Milwaukee Department of Mathematical Sciences and Center for Industrial Mathematics researchers have used to satisfy all parties.

Sample Non-Disclosure Agreement

THIS AGREEMENT is entered into by and between ____________ (corporation), with its principal office located at ________________, hereinafter referred to as “_________,” and _____________, residing at _________________________. In exchange for the mutual consideration contained herein, the parties agree as follows:

1. _____________ expects to disclose confidential information to Mr./Ms. ________ regarding ________________ and Mr./Ms. expects to disclose confidential information to ____________ regarding mathematical analysis. The purpose for the disclosure of such confidential information by the parties to each other is for Mr./Ms. _______ to develop mathematical models and analysis for ____________ for use by _____________ and for research and publication by Mr./Ms. ______, including dissertation and defense thereof.

2. Confidential information shall be clearly marked as such at the time of disclosure or shall be accompanied by a statement that it is confidential. Confidential information that is disclosed orally shall be identified as confidential at the time of disclosure and then summarized in writing; such summary shall be marked as confidential and provided to the receiving party within thirty (30) days after the oral disclosure.

3. With respect to confidential information, each party agrees:

a. to hold the confidential information of the other party in confidence to the extent permitted by law; and

b. not to use such confidential information for any purpose other than the purposes set forth in Paragraph 1 above; and

c. to disclose such confidential information only to its employees on a need-to-know basis for the purposes set forth in Paragraph 1 above; and

d. to protect such confidential information from disclosure to any third party, using at least the same standard of care as the receiving party uses in protecting its own confidential information; and

e. not to copy such confidential information except as may be reasonably necessary for the purposes set forth in Paragraph 1 above; and

f. upon request of the disclosing party, to return the original and all copies of such confidential information.

4. Confidential information shall mean all information provided by either party to the other in oral or written or other recorded form, relating to the disclosing party’s business and product lines including status and capabilities as well as the technology, architecture, and software associated therewith; plans for business and product lines; and long range plans for extending business and product lines, including discussions of future products, technology, architecture, and software development.

5. Confidential information shall not include information:

a. which is published information, or submitted for publication, or expressly designated in writing as non-confidential information;

b. which is in or comes into the public domain otherwise than by breach of this Agreement; or

c. which the receiving party can show was in its possession free of restriction prior to receipt under this Agreement; or

d. which becomes known to the receiving party from a third party without restriction, so long as the receiving party reasonably believes that the third party is authorized to disclose such information without restriction.

6. This Agreement shall be applicable to all confidential information disclosed by either party to the other. The protections of this Agreement shall survive and continue to apply to such confidential information.

7. Neither the execution of this Agreement nor the furnishing of any confidential information shall be construed as granting to the receiving party either expressly, by implication, or otherwise any license or right under any patent, copyright, trademark, trade secret, or other intellectual property right, owned or controlled by the disclosing party either presently or hereafter.

8. This Agreement shall be governed by and construed in accordance with the laws of the State of Wisconsin. No action under or related to this Agreement may be instituted or maintained against _____________ or Mr./Ms. _________ any State without is prior written consent, except in the State of Wisconsin.

IN WITNESS WHEREOF, the parties have caused this Agreement to be executed as of the day and year below written.

______________(company name)

Authorized Signature

Name

Title

Date

_____________________________(name)

Authorized Signature

Name

Title

Date

Faculty Liaison

Name

Title

Date

(Permission is granted to anyone who desires to copy this agreement and customize it. There are no warranties or guarantees for this document template. Neither the Center for Industrial Mathematics nor any UWM employee may be held responsible for the contents of the document.)

Last updated: April 4, 2006
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