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What is an NDA?

A Non-Disclosure Agreement (NDA) (also known as confidentiality agreement, CA, or confidential disclosure agreement, CDA) is a legally-binding contract which governs the sharing of information between different persons or organizations and sets out any conditions or limitations on the use of the information.

When should I use an NDA?

You should use an NDA whenever you are going to disclose proprietary information that may have commercial value and is not yet in the public domain. This way, your information will remain confidential and you can control how it is used.

Why should I use an NDA?

By using an NDA, you can ensure that:

• Your information remains confidential (this enables you to rely on trade secret protection)
• You can still obtain a patent and keep your patent rights
• The information can’t be misused for other purposes.

What happens if I don’t use an NDA?

If you provide information to another person or organization without an NDA in place, the information could be used in ways that you don’t want and you lose the ability to rely on important forms of intellectual property protection (such as patent and trade secret). In other words, if you don’t use an NDA, the recipient could be free to use the information for whatever they want and if you disclose proprietary information before a patent application is filed, you may not be able to patent and any patent granted may be invalidated, leaving you with no rights.

How does an NDA protect my information?

An NDA identifies the information that is to be kept confidential and stipulates how that information may be used by the recipient. It requires the recipient to take reasonable measures to keep the information confidential and prohibits them from disclosing it to any other party. This way, your information is only used by those who you want to use it and is only used for the purposes you want it used for.

What information will WORLDiscoveries® need to finalize an NDA?

You will need to provide the following information for WORLDiscoveries® to draft an NDA for you (which you may submit via our online form):

• The name and address of the recipient company/organization
• The name of the designated contact person for the company/organization
• A description of the information you intend to disclose
• The reason you are disclosing the information (e.g. is it for a research collaboration?  A grant application? Some other form of partnership?)

You should let WORLDiscoveries® know if there are any particular concerns or issues involved.

I received an NDA from an industry contact. What should I do?

Contact a member of the WORLDiscoveries® team to have them review the document for you. WORLDiscoveries® will make sure that the NDA does not give the industry contract any rights in your intellectual property and doesn’t unduly restrict your ability to publish. This way you can be sure that your interests are protected.

Once an NDA is in place, what are my obligations?

Once an NDA has been finalized, you will need to abide by the terms of the NDA. This means that if you will responsible for:

• Receiving / disclosing the information -You may be appointed as the designated representative, in which case you will be responsible for providing the information to the other party, or receiving it from them, depending on the circumstances.
• Respecting the limits on use of the information – You must make sure you that only use the information for the purpose that is specified in the NDA and not for any other purpose.
• Keeping the information confidential – You must not disclose the information to anyone else unless that is specifically permitted in the NDA.
• Taking appropriate measures to protect the information – When you receive the confidential information, you must make sure you take reasonable measures to keep it secure, such as storing it in a password protected system or locked filing cabinet. And if you discover that the information has been accessed by an unauthorized person, you must immediately notify the other party.

Who can sign an NDA?

Any agreement that binds your institution must be signed by an officer of the institution (Western, Robarts or Lawson) who has appropriate signing authority. The Director of WORLDiscoveries® is one signing authority, and our staff can help you determine alternate signatories. In some cases, you will also be required to sign the NDA to acknowledge your duties under the agreement.

Who should I talk to if I have more questions about an NDA?

You can contact Jonathan Deeks of WORLDiscoveries® by email at:ipm@worldiscoveries.ca or by telephone at 519-661-2111 x84594.

Please note: the answers provided in these FAQs are by way of example only. They do not purport to provide legal or professional advice and may not be relied upon for such purposes. Wherever a specific concern is encountered with a contract or issue, you should contact your institution's contracts team.

What is a Material Transfer Agreement?

A Material Transfer Agreement (MTA) is a legal contract that governs the transfer of a material that is owned by one researcher or institution to another researcher or institution for research purposes.

Why do I need to use an MTA?

Releasing materials from your institution (Outgoing): An MTA will protect your interests by clearly setting out what the researcher can do with your material and limiting the liability risks for both you and your institution. For example, if you want to be informed of the results of the research or restrict the use of the material to a specific project, you need an MTA. Similarly, if the material is hazardous, infectious or subject to special regulation, an MTA will protect you against liability for having provided it to the researcher.

Bringing materials into your institution (Incoming): An MTA will protect your interests by clearly setting out what you can and can’t do with the material so that there is no confusion or dispute between the parties. For example, the institution providing the material may wish to restrict or control any publications relating to the material they have provided. To ensure that you retain your academic freedom, the contracts officer at your institution will work with the other party to safeguard your ability to publish.

Ultimately, all WORLDiscoveries® institutions (Western, Robarts and Lawson) require all transfers of material either in or out of the institution to be covered by an MTA.

What is the process for getting an MTA in place?

The process for getting an MTA in place is as follows:

1. Submit an MTA request to WORLDiscoveries® 
   To request an outgoing MTA, complete the online MTA (outgoing) request form. Western and Robarts researchers may contact Goretti Fordyce directly if they have any questions or wish to enter into an incoming MTA, while Lawson researchers should contact Todd Copeland.
2. MTA prepared / reviewed by your institution
   In the case of an outgoing MTA, an officer from your institution will prepare an MTA tailored to your circumstances and based on the information you provide. In the case of an incoming MTA, if the researcher or institution has provided you with an MTA for your use of the material, a contracts officer from your institution will review the MTA to ensure it is appropriate for your circumstances and does not interfere with your academic freedom. In the rare cases where the researcher or institution does not have an MTA, the contracts officer will tailor an MTA for the circumstances.
3. MTA signed by both parties
   The contracts officer assigned to your MTA will liaise with the researcher’s institution to finalize the MTA and have it signed by both their institution and Western, Robarts or Lawson. The Principal Investigators (aka the Providing and Recipient Scientists) from each institution will be asked to sign an acknowledgment which indicates that they are aware of and agree to the terms of the Agreement and the conditions attached to use of the material being transferred.
4. Release of material
   As soon as the providing and recipient institutions each have copies of the signed MTA, the material may be transferred to the recipient scientist.

What can happen if I don’t use an MTA? or if I review and sign an MTA myself?

Outgoing: It depends on the circumstances, but in general, if you fail to use an MTA when sending out materials there can be significant adverse consequences for both you and the your institution. Without an agreement in place, you are releasing the material to the recipient researcher without any limitations or contractual rights or remedies. The recipient could send the material to other researchers and publish results regarding use of the material without notifying you or obtaining your consent. In addition, both you and the University could be exposed to liability for use (or misuse) of the material by the recipient. It can also complicate matters down the line if the researcher creates something using your material. For these reasons, it is essential that you do not send materials to other researchers without an MTA.

Incoming: Again, it depends on the circumstances, but in general, if you fail to use an MTA when receiving materials from other researchers, your rights to use the material may be limited. For example, if there is no agreement in place, you may find that if you subsequently discover something or create something using the material, your ability to protect and distribute that discovery or invention may be compromised.

Furthermore, if you use an MTA, but sign it yourself (without having it reviewed or signed by your institution's authorities), the agreement may not be enforceable. An MTA that is not signed by an authority that can bind your institution may not be valid and the signatory may be personally liable for any claims that arise relating to the agreement.

For these reasons, it is essential that you do not send materials to other researchers without having an MTA in place and reviewed by your institution's contracts team.

What kind of information is required to prepare an Outgoing MTA?

A contracts officer from your institution will work with you to ensure the MTA is appropriate for your circumstances. For this reason, you should inform the officer if:

• The material is particularly valuable and you want additional protection covering things like ownership and rights to use.
• The material is related to an invention or discovery
• The material is particularly sensitive and you would like it to be kept confidential with limits on publication
• You want to control how the material is used and who it is used by, such as by restricting student access.
• You want to receive reports from the researcher on the results of their use of material

What issues can be found in an Incoming MTA?

You may be presented with an external MTA that includes provisions that can compromise your ability to publish or expose your institution to significant liability risks. For this reason, it is essential that all MTAs are reviewed by your institution's contracts team. They will review the MTA to ensure that:

• You are not restricted from publishing
• The MTA does not give the external institution excessive rights of ownership to any modifications you make to the materials or any new discoveries or inventions you create through your use of the MTA
• The MTA does not impose inappropriate indemnification or liability terms on your Institution
• The MTA does not conflict with any other obligations relating to funding or other aspects of your research project

What regulatory compliance issues should I be aware of?

When transferring materials between two institutions or researchers, there are many regulatory compliance issues which both your institution and the institution receiving the materials needs to address. This is why an MTA is so essential. Common regulatory compliance issues relate to:

• Toxic and hazardous materials
• Radioactive items
• Animal materials or materials derived from animals
• Human samples
• Drugs

Who can sign an MTA?

As an MTA binds the Institution, it can only be signed by an officer of the institution who has the necessary signing authority. At Western, this includes the Director of WORLDiscoveries® and the Vice-President of Research & International Relations, for example. The Principal Investigator (aka Recipient or Provider Scientist) will also be required to sign the MTA to acknowledge that they are aware of the terms and conditions attached to the materials.

Who should I contact if I have more questions about MTAs?

Please contact the representative in charge of arranging MTAs for your institution if you have any further questions. They are:

• Western & Robarts: RD&S Contracts Research group. Contact Goretti Fordyce, Agreements Coordinator, 519-661-2111 ext 80180 with any questions.
• Lawson: contact Todd Copeland, Manager, Technology Development & Commercialization, 519.685.8500, ext. 77722.