Patent Protection

Confidentiality Disclosure Agreement

It is always advisable to have already filed a Confidential Disclosure Agreement (CDA), or Non-disclosure Agreement (NDA), when you talk to someone about your invention or otherwise disclose sensitive information. A CDA is simply a contract between two or more parties where the subject of the agreement is a promise that information conveyed will be maintained in secrecy.  YOU SHOULD NEVER RELY ON OR ANTICIPATE THAT A COURT WILL ENFORCE AN ORAL AGREEMENT.  Why shouldn't you rely upon an oral confidentiality agreement? Because it's exceedingly difficult, if not impossible, to prove the existence of an oral agreement and/or actions suggesting the creation of such an agreement. ALL CDA’s must be reviewed by the appropriate Institute official at Stevens in order to be binding and enforceable.  PIs, other faculty, students, or non-designated staff may not bind the Institute to any terms of confidentiality.

The two types of CDA's are:

Mutual (Doc. 46kb) or “Bilateral”  CDA is used when both parties will convey confidential information, such as for inventor groups, or when a PI with existing intellectual property is visiting a commercial entity which also has intellectual property that needs to be protected.

One Way (Doc. 42kb) or “Unilateral” CDA is used when only one party is turning over confidential information, perhaps to a potential investor or a prospective licensee.

Review and Approval

When Confidential Disclosure Agreements (CDA’s) are initiated by Stevens, follow these guidelines:

  1. Determine the appropriate agreement form, i.e., mutual or unilateral
  2. Share the unsigned, unexecuted template with the other organization so it can be reviewed by their legal counsel (available on the Provost’s and OSP websites)
  3. Contact either OSP Executive Director or the OIE Director of Intellectual Property Management within the Provosts organization. These are the only two individuals authorized to review, negotiate and sign research related confidentiality agreements for Stevens. Advise them about the following:
  • Technology being protected
  • Is there a patent/copyright/trademark registered
  • Specific information that will be helpful in negotiating the agreement
  • Who to contact at the other organization
  • A Stevens administrative coordinator will be informed to log and record the matter in a central file.  The administrative coordinator will include the PI/faculty/student or staff in all discussions to ensure complete and accurate information, secure the PI/faculty/student or staff person’s signature on the final version and execute on behalf of Stevens (the PI/faculty/student or staff person’s signature denotes acknowledgement of the agreement and understanding of the terms and conditions)
  • A fully executed copy will be sent to the other organization, to the Stevens PI and a copy will be maintained in a permanent file in the Office of Sponsored Programs

When Confidentiality Agreements are initiated by the other organization, provide a copy of the other organization’s unsigned, unexecuted template, prior to any meetings, if possible, to either OSP Executive Director or OIE Director of Intellectual Property Management. Advise them about the following:

  • Technology being protected
  • Is there a patent/copyright/trademark registered
  • Specific information that will be helpful in negotiating the agreement
  • Who to contact at the other organization
  • The Stevens administrative coordinator will include the PI/faculty/student or staff in all discussions to ensure complete and accurate information, secure the PI/faculty/student or staff person’s signature on the final version and execute on behalf of Stevens (the PI/faculty/student or staff person’s signature denotes acknowledgement of the agreement and understanding of the terms and conditions)
  • An executed copy will be returned to the other organization
  • A fully executed copy will be sent to the Steven PI and copy will be maintained in a permanent file in the Office of Sponsored Programs

Until further notice, all confidentiality agreements that are related to an academic event will be negotiated by the Chief Risk Officer and approved by the Provost

Confidential Markings

Confidential records contain information that for one or more reasons should only be disclosed to specific people or groups.  For instance, the information may relate to trade secrets, scientific discoveries, technical, commercial or financial plans.  If the loss of information compromises Stevens' research or business position, it is most likely considered to be “confidential”.   To avoid this problem, we recommend steps be taken to identify and label such information.  Ensure that records for which circulation should be limited are clearly marked CONFIDENTIAL.  Note on the record itself or in associated notes the persons who should have access to this information.  We suggest using a stamp stating:  Stevens Institute of TechnologyConfidential/ProprietaryInformation.

Use the “confidential” designation thoughtfully.  Don’t mark most or all of your records as CONFIDENTIAL.  Doing so will undermine the argument for treating selected records as confidential.  And while a confidential marking doesn't mean that a record won't be disclosed as the result of an access request, it may help to explain if Stevens makes a decision not to release a record in response to a request for access.