The University of California
Office of the Vice President--Administration
October 16, 1974
I-2. Proprietary Data Imparted to UC from Private Sponsors of Research
The attached memorandum from the Patent Administrator to Dr. F.E. Dickinson
of the Forest Products Laboratory is provided for your information and guidance in the negotiation of research contracts and grants. The attachment relates to research sponsored by an industrial concern; however, the principle is applicable to all agreements with non-public entities.
Although the proposed language on the second page of the memorandum does not state that proprietary data delivered should be so marked by the sponsor, appropriate marking is recommended.
Refer: P. Klenz, 2-2592
Rights in Technical Data
August 19, 1974
OFFICE OF THE BOARD OF PATENTS
521 UNIVERSITY HALL
DR. F. E. DICKINSON
Forest Products Laboratory
478 Richmond Field Station
Re: Proprietary Data
This is further to our recent discussion regarding proprietary data that may be revealed by industry to University investigators in connection with a research grant or contract from an industrial concern.
We can appreciate the need and desirability on the part of an industrial concern to protect its operating data and not have them revealed to its competitors. However, the University should not be placed in a position of absolute trust of such proprietary data, for, as an educational institution, the results of University research efforts are not subject to unqualified secrecy. I believe the most we can promise in a research contract or grant is to use our best efforts to hold a company's proprietary data confidential, but in the event such data are inadvertently revealed to third parties, the University should not be held liable.
The suggestion has been made that persons connected with a research project sponsored by an industrial concern might be asked to sign secrecy agreements as individuals before receiving operating data necessary for the particular research work to be undertaken in the University. So long as graduate students or employees of the University are acting in connection privately with a [insert] sponsored research project in the University, they should not be permitted to sign any unqualified secrecy agreements as individuals or otherwise.
Although a secrecy agreement has been signed by an individual, this would not preclude the company from including The Regents in any lawsuit it chose to bring against the individual for revealing proprietary information to third parties. (A student's situation where he is acting only in his own behalf concerning his academic work, and not in connection with a sponsored research project in the University, may be a different matter, however. You may wish to pose this question to General Counsel.)
In the event the question comes up in possible negotiations of research grants, you may wish to consider using the following language, but only if the industrial concern insists on inclusion of a secrecy clause:
Insofar as sponsor must reveal to University any operating data of a confidential or proprietary nature, University, upon specific request by sponsor, agrees to use its best efforts to hold such data in confidence, provided, however, that University shall not be held liable in the event such data are inadvertently revealed to third parties.
Such language does not offer the sponsor much protection, but, as an educational institution whose faculty and staff are committed to the dissemination of knowledge acquired from the research effort, the University is not in a position to offer more.
Mr. August G. Manza
Mr. R. D. Wolfe
(Miss) Josephine Opalka PATENT ADMINISTRATOR