Consulting

Yes – be sure to carefully review the entire consulting agreement and obtain personal legal counsel to assist with negotiation of the agreement.  Because you are entering into a consulting agreement in your personal capacity, rather than as a University employee, UCLA’s Technology Development Group does not have the delegated authority to review and negotiate the agreement for you.  That said, we recommend you pay careful attention to the following:

Intellectual Property:  The consulting agreement may include language dictating who or what entity owns the results created in the performance of your consulting agreement.  Please note University employees have pre-existing obligations to assign inventions and patents you conceive or develop (1) within the course and scope of your University employment while employed by University, (2) during the course of your utilization of any University research facilities or resources, or (3) through any connection with your use of gift, grant, or contract research funds received through the University.  For helpful language to insert into your consulting agreement, see FAQ below entitled “What steps should I take to ensure my consulting agreement does not conflict with my intellectual property obligations to the University?”

Confidentiality:  Companies routinely require consultants to maintain the company’s information and the consultant’s results generated in the performance of the consulting as confidential. If the faculty member discloses the confidential information, either intentionally or unintentionally, in breach of a confidentiality provision in the consulting agreement, the faculty member may be personally sued and subject to damages.  The University will not provide legal services for personal consulting.  See below additional FAQs regarding confidentiality obligations, which contain helpful guidance as to what to be aware of with respect to such provisions.

Parties to the Consulting Agreement:  Please be sure to confirm that the consulting agreement does not purport to pull in the University as a party to the agreement.  If the company desires for the University to be a party, such activities could be conducted via a sponsored research agreement, potentially a fee-for-service agreement, or other collaboration agreement.  Please email contracts@tdg.ucla.edu if a company is interested in funding research on campus. 

You are required to submit an Invention Report and UCLA IP Non-Assert/Release Request Form (email contracts@tdg.ucla.edu for a copy) to UCLA’s Technology Development Group and, unless UCLA TDG issues to you written confirmation that it does not intend to assert rights to such invention, it is presumed the University owns such invention.

Companies employing faculty consultants may wish to have faculty consultants assign rights to inventions made during the consulting activity. To assure that faculty can make such an assignment to the company, the faculty member is required to disclose such invention to UCLA TDG pursuant to an Invention Report, as well as a Supplementary Information Form. This information will permit UCLA TDG to conduct an analysis as to whether it is willing to not assert rights to such invention.

UCLA TDG will decide to not assert rights to an invention if the inventors warrant and represent in writing that the information contained in the Invention Report was not:  (1) developed using gift, grant or contract research funds administered through the University; (2) developed using University research facilities; or (3) created within the course and scope of University employment.  In addition, your Dean’s office will be required to provide written confirmation that they support your request for a non-assertion of rights.  Delays in submitting the Invention Report and/or UCLA IP Non-Assert/Release Request Form, or submitting incomplete forms, will delay such decision. Absent receipt of notice of such decision, any purported assignment to the company will be invalid.

Potentially – read the details of the obligation carefully and do not use your University email account when exchanging confidential information. 

Companies routinely require consultants to maintain the company’s information and the consultant’s results generated in the performance of the consulting as confidential. If the faculty member discloses the confidential information, either intentionally or unintentionally, in breach of a confidentiality provision in the consulting agreement, the faculty member may be personally sued and subject to damages.  The University will not provide legal services for personal consulting.

Therefore, it is essential to (1) limit the amount and type of confidential information received when consulting; and (2) agree in advance to receive it only in written form and marked as “confidential.”   It is recommended that the consulting agreement include a statement that releases the consultant from liability for disclosures that are unintentional.

The faculty member must not use University email to receive any confidential information from the company because the University is not bound by the confidentiality agreement. Thus, the faculty member may not be able to assure that the company’s information will be kept strictly confidential because the University will not expend resources to protect the company’s confidential information when it is unrelated to a University activity. Additionally, because the University is subject to the California Public Records Act, the records may have to be released. The University can make no assurance that proprietary information would be identified and protected.

No.

Like with the consulting agreement, because the CDA/NDA is being advanced as part of prospective consulting activity, UCLA TDG does not have the delegated authority to review and negotiate the agreement for you.  In view of this, UCLA staff cannot provide faculty with personal legal advice, nor can they act on behalf of individual faculty to negotiate the terms of the CDA/NDA.  Therefore, we recommend that you seek legal counsel to assist with the review of any CDA/NDA that you are asked to sign.

At a minimum, incorporate the language in bold below into the consulting agreement prior to signing it.  Because you are entering into a consulting agreement in your personal capacity, rather than as a University employee, UCLA’s Technology Development Group does not have the delegated authority to review and negotiate the agreement for you.  That said, we recommend you include the following language in the consulting agreement to ensure the other party (e.g., company) is put on notice as to your pre-existing obligations to the University:

Consultant is an employee of, and has pre-existing obligations to, the University of California (“University”), including a broad obligation to disclose all inventions made by Consultant regardless of the context, e.g., even if made outside of working hours, in the performance of consulting activities, etc. Pursuant to the University’s Patent Acknowledgment, Consultant has assigned to the University inventions and patents that Consultant has or in the future will conceive[d] or develop[ed] (1) within the course and scope of Consultant’s University employment while employed by University, (2) during the course of Consultant’s utilization of any University research facilities or resources, or (3) through any connection with Consultant’s use of gift, grant, or contract research funds received through the University. No provision of the agreement entered into between Company and Consultant will be construed to apply to the University or supersede Consultant’s obligations to the University. In the event of a conflict between any provision of any agreement entered into between Company and Consultant and the University’s Patent Acknowledgment (PDF)                 (https://ucnet.universityofcalifornia.edu/forms/pdf/upay-585.pdf), the University’s Patent Acknowledgment will supersede and control.

If you have any specific questions regarding your intellectual property-related obligations to the University, please email us at contracts@tdg.ucla.edu.