Many of the agreements we execute (e.g. MOUs, subcontracts) contain a provision that we keep information disclosed to us from the other party confidential.  In such cases, we have a duty of care for handling that information – We are obligated to use a reasonable degree of care to protect and preserve the confidentiality using procedures no less rigorous than those used to protect our own proprietary information.  Consequently, we are agreeing that we won’t share or disclose the confidential information (CI) of the other party to any third parties, nor use the information outside of what is required by the contract, without the consent of the other party.

From a practical perspective, here’s what to remember when your relationship requires the use of the other party’s CI:

(1)          Restrict access to only those employees or agents who have a need to know – disclosing to someone solely because of who they are (i.e. colleague, friend, donor, sponsor, governmental agency, partner, competitor) is not permissible

(2)          Label files “CONFIDENTIAL.”  This doesn’t take much time, but has a substantial impact on how the information contained therein is handled and considered.

(3)          Label all correspondence (letters, memos, and emails) containing any part of the CI “CONFIDENTIAL” and include the following statement:

“The attached material is proprietary and deemed to be confidential.  It is not to be duplicated or disclosed to any third parties, in whole or in part, without permission and shall only be used by you in the context of the matter at hand.”

(4)          When in doubt, stop and find out.  It’s better to have a five-minute phone call with your ORA rep asking what to do beforehand than to have a two-hour meeting with your ORA rep AND your department chair AND assorted legal personnel once something has been disclosed without permission.

(5)          Remember that the same actions apply to our own information – draft proposals, data or models that support your SOW on a Subagreement, etc., should be labeled and treated in the same fashion.

As a tip, always remember that salary information must be treated confidentially.  Therefore, Budgets containing salary info must ALWAYS be marked “Confidential.”

So, why do we always make such a big deal about confidentiality?  For one, JHU is responsible for a breach by its employee, so you are potentially availing the university to liability for your actions.  Secondly, the other party could seek an injunction or sue for damages, which, whether substantiated or not, would result in a significant expenditure of resources, not to mention a black mark on the Hopkins name.

Finally, on a more micro level, an employee violation may result in disciplinary action including termination.  Remember, Hopkins employees are subject to Section 9 of the Personnel Policy Manual, which describes general standards of conduct and performance that apply throughout the University.  Standards include:

“Each staff member is to comply with University and departmental policies and procedures. . . .  Each staff member is to respect the confidentiality of sensitive information.  Such information should not be repeated, discussed or removed from the work area….”

While we’ve mostly been talking about our responsibilities with respect to CI, keep in mind that we desire and request the same levels of protection for our CI from every entity with which we contract, and in myriad circumstances.

For example, let’s look at a proposal, which is a competitive bid.  Proposals are your unique work product, and your competitive edge, so why would you show your hand unless you had to?  The competition should not have access to it (unless you decide to give it), as we want a level playing field throughout the entire process.  As such, marking our work “Confidential” not only creates a duty of care on behalf of the recipient, but also gives you the basis to argue a breach if someone steals your ideas, programs, methodologies, or model.

The bottom line?  It’s better to be safe than sorry, so mark your CI accordingly or, alternatively, contact ORA before disseminating any information that you might consider proprietary.

Given the breadth of the research programs originating from Johns Hopkins, it’s not surprising that our office handles contractual opportunities from sponsors of myriad scope and size.  For every Gates Foundation, we’ll talk turkey with a small, limited-resource organization whose funding activities are not nearly as frequent as those of their larger colleagues.  Generally, we’ll push for roughly the same obligations for a project regardless of sponsor.  However, there are a few contractual terms that do vary depending on the nature of the funding party, and one such clause is that which relates to the ownership of any intellectual property created during the course of the funded project.

When the Prime is a non-federal entity, either party can usually own the output, with a license granted back to the non-owning party.  However, when the research is being funded by a federal agency, the requirements are more cut and dried, thanks to two elder statesmen of the U.S. Senate.

Prior to 1980, the U.S. Government was reluctant to allow non-profits to retain title to inventions created using federal funds, and would instead keep the patents for themselves so that they could more readily licensed.  Not surprisingly, while the Government ended up being owners of thousands of patent applications, the infrastructure was simply not available to license accordingly, and the vast majority of these technologies lay dormant.  However, this all changed with the Patent and Trademark Law Amendments Act of 1980, sponsored by Senators Birch Bayh (Indiana) and Bob Dole (Kansas), which sought to remove the licensing responsibilities from the shoulders of the Government.

Under “Bayh-Dole,” as it’s commonly now referred, non-profits and educational institutions now posses the first right of ownership to “subject inventions” that they create using federal funds.  In order to take advantage of this provision, these non-profits must report their inventions to the Government and take proper steps to vest their rights, the latter being even more important in light of the recent Supreme Court decision involving Stanford University.  The Government retains an automatic non-exclusive license in any such invention, and may even be able to obtain full ownership if the non-profit does not meet the requirements of the Act, such as licensing the technology within a certain time frame.  However, with very limited exceptions, no private entity is entitled to ownership of inventions falling within the scope of Bayh-Dole, as they are limited to receiving, at maximum, a license to anything created by their non-profit or educational subcontractor.

As an example, let’s consider the private company CompuGlobalHyperMegaNet.  CGHMN has obtained a grant from NIH for $10M, and decides to engage two subcontractors for separate areas of work: Globex Corporation, a for-profit entity, and Springfield University, an institution of higher learning.  As part of the terms of their agreement, CGHMN may require Globex to assign to them any and all inventions that arise during Globex’s work under the NIH-funded subcontract.  However, CGHMN may not make a similar requirement in its subcontract with Springfield University, since, under Bayh-Dole, SU is automatically entitled to the first right of ownership of such subject inventions.  Consequently, CGHMN’s attorney (a Mister L. Hutz) will have to make sure that his company’s contract with Springfield University properly notes the governmental provisions of Bayh-Dole and considers all of the applicable obligations arising thereunder.