Page Updated: January 22, 2020
To provide guidance to the campus community and our sponsors, below are a list of frequently used terms associated with award documentation.
Arbitration refers to a form of dispute resolution intended to avoid full litigation. Parties to arbitration refer the dispute to one or more persons (arbitrators) that review the evidence and imposes a decision which is enforceable in court. There is binding arbitration which means the parties agree that the decision is final and cannot be overturned by a court except in limited circumstances (fraud for example). Then there is non-binding arbitration in which a party can reject the decision and demand a court hearing instead. While the University can accept arbitration in principle, the sovereign immunity of the state prevents the prevailing party from going to court for immediate enforcement. Instead, the claim must be submitted to the State of Wisconsin Claims Board, which holds a hearing and then makes a recommendation to the legislature to grant or deny the claim. If the legislature denies the claim an action may then be brought against the state subject to certain statutory requirements. For these reasons, binding arbitration is not acceptable because the premise of binding arbitration (cannot be overturned) runs contrary to the State of Wisconsin process.
Often referred to as a "BAA," these agreements create protections whereby one entity (the Covered Entity) can provide protected health information (PHI) to another entity (the Business Associate) so that the Business Associate can perform a service for the Covered Entity (such as evaluating its systems for improvements). Because PHI is sensitive (health information about an individual) and is identifiable to an individual because it is tied to direct and indirect identifiers (e.g., Name, DOB, Social Security Number, Address, etc.), HIPAA requires that it be provided to the Business Associate onl y under strict standards of protection as outlined in the Business Associate Agreement.
Confidentiality refers to the need to protect certain information from disclosure. The University of Wisconsin-Madison will exercise a reasonable effort to protect, confidential information if it is useful or necessary to the performance of a sponsored research agreement. However, we request that information sent to us which is intended to be kept confidential be properly identified as "confidential" when it is provided to the University of Wisconsin-Madison so that it can be properly handled and segregated. Additionally, the University of Wisconsin-Madison requests that the duration of the confidentiality period be limited. A provider of confidential information may require that proprietary data be returned at the end of a project, however, the investigator should be allowed to retain a copy of the proprietary information to ensure continued compliance during the term of confidentiality.
Copyright is a form of protection for original works of authorship. Copyright often applies to articles, literary works, and music. It also applies to software, though software can be a mix of copyright and patent. Traditionally, the University of Wisconsin-Madison does not assert an ownership interest in the copyright produced by the activities of researchers, students, and/or faculty (see University of Wisconsin System General Administrative Policy 342 Section 6.C.VIII). However, the University of Wisconsin-Madison does reserve a non-exclusive right to use the works for educational and research purposes. Provided that is protected, researchers, students, and/or faculty may license or assign those rights at their own discretion. This often happens with researchers providing the copyright to publishers of their work.
As defined by federal law, data are recorded information, regardless of form or the medium of recording, including technical data and computer software. Under University of Wisconsin System General Administrative Policy 342 Section 6.C.IX, “No agreement shall be entered into with an extramural sponsor which allows the transfer of ownership of data.” There is a limited exception to this for industry sponsored clinical trials. However, beyond these industry sponsored clinical trials, the University of Wisconsin-Madison must object to any clauses that assign ownership of data to the sponsoring entity. While retaining ownership, however, the University of Wisconsin-Madison routinely provides copies of raw data to sponsors without restriction on use.
Often referred to as a "DUA," this refers to the agreements described in the HIPAA Privacy Rule for the use and disclosure of protected health information (PHI). DUAs allow for the sharing of a data set which has the direct identifiers stripped out to create a “Limited Data Set.” Limited Data Sets may contain some information that is indirectly “identifying,” (i.e. City, State, Zip and Dates) but it is much harder to trace to a specific person without the actual, direct identifiers. It is important to emphasize that the Data Use Agreement is a HIPAA Privacy Rule term and means that a Limited Data Set is being used or disclosed. Many times researchers may say they have a “data use agreement,” but that’s really a misnomer because what they are receiving or sending does not have anything to do with PHI. The real term that should be used in those other instances are data release agreement or data sharing agreement because what is being shared or received is existing data from research but unrelated to medical history or payment for medical care.
Early termination provisions provide the process by which an award is terminated early, whether the reason is for breach or convenience. All termination clauses should provide notice to the University of Wisconsin-Madison or the sponsor so that both parties are aware of the circumstances surrounding termination. If the termination is for breach, there should be a time frame for the breaching party to cure. If the termination is for convenience, there should be a wind-down period to allow the University of Wisconsin-Madison or the sponsor time to descalate their activities.
FAR Clauses refer to the Federal Acquisition Regulations which are the principal rules governing the process by which the federal government acquires goods and services. The primary portion of these rules as they apply to the University are located in 48 CFR Part 52. Beyond the base FAR Clauses, there are additional supplements issued by other entities within the federal government. These include the Defense Acquisition Regulations (DFAR), the Department of Energy Acquistion Regulations (DEAR), the Health and Human Services Acquistioin Regulations (HHSAR), and the NASA Acquisition Regulations (NASA FARF).
The purpose of naming governing law (or choice of law) in an agreement is so that the parties determine at the time of contracting which state's laws will apply to any disputes that may arise under the contract. Governing law is different than jurisdiction or venue, as those two terms relate to who can hear a case and where (respectively). For governing law, any court may apply the laws of another state. If absolutely necessary, the University of Wisconsin-Madison can generally agree to apply the laws of another state to a dispute arising under the contract. However, we cannot agree to apply another state's laws with respect to liability provisions or jurisdiction, as this would waive the sovereign immunity of the State of Wisconsin.
Indemnification clauses are an agreement that one party be responsible for the liabilities imposed on the other party. Wisconsin law prohibits the University of Wisconsin-Madison from accepting a sponsor’s liability for damages suffered by third parties. The relevant law provides that the University can hold harmless a sponsor for liability which is founded upon or grows out of the acts or omissions of UW officers, employees or agents while acting within the scope of their employment, and where the claimant notifies the Wisconsin attorney general within 120 days of the event causing the injury, and conforms to certain other procedural requirements. See: secs. 893.82 and 895.46(1), Wis. Stats.
Injunctive relief, or simply injunctions, are court orders for a party to act in a certain way or prohibit certain actions by that party. These are issued against one party at the request of another party. In general, the University of Wisconsin-Madison can agree to injunctive relief provisions. However, the University of Wisconsin-Madison cannot agree that a party is outright entitled to injunctive relief. Instead, we require the party seeking an injunction to request and prove a claim in court, which the University of Wisconsin-Madison can challenge.
Insurance provisions outline the level of liability coverage that a contracting party will maintain for purposes of the agreement. The University is self-insured through the State of Wisconsin statutes. Specifically, UW has coverage for:
Speaking generally, intellectual property refers to the products of human intellect and is composed of four main categories - patents, copyrights, trademarks and trade secrets. From the sponsored project perspective, we primarily focus on two of the categories - patents and copyrights. Traditionally, the University of Wisconsin-Madison does not claim ownership to the intellectual property of researchers. However, as the contracting party for sponsored project agreements, the University of Wisconsin-Madison has an obligation to comply with the terms and conditions of the award documentation, and when there are legal obligations to sponsors with respect to intellectual property, the University of Wisconsin-Madison does require researchers and/or students to assign their intellectual property ownership rights to the University or its designee (WARF) so that the University can meet its legal obligations.
Jurisdiction is the power of a court to make a decision over the individuals involved in the dispute. Having jurisdiction presumes that the court has control over the subject matter of the dispute as well as over the parties. Because the University of Wisconsin-Madison is a state institution, we are covered by the State of Wisconsin’s sovereign immunity. As a result, absent a waiver of this immunity or consent by the legislature to be sued, courts outside of the State of Wisconsin do not have jurisdiction over the University of Wisconsin-Madison.
Open Records Laws, also known as Public Record Laws and Sunshine Laws, permit the public to observe and/or inspect records created by public entities. Under Wisconsin State Law, the University of Wisconsin-Madison as a public entity is subject to the state public records laws. As a result, the University of Wisconsin-Madison has limited ability to keep records, including contracts, confidential. Under the laws, trade secrets can be protected, but not the existence or terms of the contract.
A patent is the grant of a property right of an invention to the inventor. The right itself is the right to exclude others from making, using, offering for sale, or selling the invention. In general, the University of Wisconsin-Madison does not assert ownership to patent rights when such are created by researchers, students, and/or faculty (see University of Wisconsin System General Administative Policy 342 Section 6.C.VII). However, when there is an obligation to grant licenses to the sponsoring entity (whether federal or otherwise), the University of Wisconsin-Madison does have ownership assigned to itself/WARF to meet our obligations to the sponsoring entity. Additionally, because of the possibility of conflicts between sponsoring entity agreements that the University of Wisconsin-Madison enters into, the University of Wisconsin-Madison does not generally agree upfront to assign ownership of patent rights to sponsoring entities.
A primary mission of the University of Wisconsin-Madison is to discover and disseminate knowledge. This is emphasized by University of Wisconsin System General Administrative Policy 342 Section 6.C.VI. Therefore, while the University of Wisconsin-Madison will protect proprietary or confidential information received from a research sponsor or collaborator (see information on "Confidentiality"), it will not enter into an agreement which obstructs public access to information derived from the research except under exceptional cases (see Wisconsin Statute Section 36.11(55m)). The University of Wisconsin-Madison does routinely give research sponsors and collaborators the opportunity to review and comment on reports in advance of publication or other public disclosure. Provided the review is only advisory, and final authority to publish remains with the investigator (preserving the investigator’s academic freedom), this is permissible.
Publicity is the act of iniating advertising where the research sponsor is identified by name. This contrasts with open records where the University of Wisconsin-Madison merely discloses the existence of the relationship of the parties. In instances where the University of Wisconsin-Madison or the sponsor intends to initiate advertising, we request prior written permission of the non-advertising party prior to releasing such advertising or publicity.
This is the legal doctrine that a state is immune from lawsuits or other legal action except when the state itself consents or waives this immunity. This immunity is a Constitutional Immunity to the State of Wisconsin, as well as agencies acting under the State. As a state-run entity, the sovereign immunity of the State of Wisconsin covers the University of Wisconsin-Madison. Due to this fact, the University of Wisconsin-Madison cannot generally agree to provisions (such as jurisdiction outside of Wisconsin) that would waive the sovereign immunity of the State of Wisconsin.
Trade secrets are a form of intellectual property, much like patents or copyrights, but which are not public or registered. Generally, a trade secret is information, which has economic value because it is not generally known to or readily ascertainable by the public, and which is the subject of reasonable efforts to maintain its secrecy. So long as information fits within the definition of a trade secret, it is protected from misuse and misappropriation in perpetuity.
Venue is the particular location in which a court with jurisdiction may hear and determine the dispute between parties. Venue deals with location of the courts that have jurisdiction. Though not the same as jurisdiction, venue is still problematic to the University of Wisconsin-Madison because it assumes that the courts would also have jurisdiction over the dispute. Moreover, litigating outside of Wisconsin is costly and often requires obtaining local attorneys to represent the University of Wisconsin-Madison in the case. For this reason, the University of Wisconsin-Madison requests removal of venue clauses where venue is outside of Wisconsin.
WARF stands for the Wisconsin Alumni Research Foundation. They are the patent management organization of the University of Wisconsin-Madison.
Warranties are assurances/promises that a particular item meets certain specifications and is fit for a particular purposes. Since research by its nature is unpredictable and without guarantee of success, the University of Wisconsin-Madison can conduct research solely on a reasonable effort basis. The University of Wisconsin-Madison cannot accept provisions that impose penalties for failure to make progress as determined by the sponsor, or which allow the sponsor to refuse payment if it unilaterally decides the research deliverables are unsatisfactory. The University of Wisconsin-Madison follows federal guidelines providing that allowable costs will be paid regardless of research outcomes.