20041102 mta sharing research materials in academia aka: everything you could want to know about...

20041102MTA

Sharing Research Materialsin Academia

AKA: Everything you could want to know about

Materials Transfer Agreements

20041102MTA

Office of Research Services400 EPH

Heather Gallant, PhDCoodinator, Business Development, Contracts, Technology Transfer

416-979-5000 ext 7521 [email protected]

Robert DirsteinDirector


LEADERS OF TOMORROW20041102MTA

What is a Materials Transfer Agreement (MTA)?

• Contract between provider and recipient

• A form of license:– Permits use of specified material for specific

purpose (usually research)

• Protects the provider’s investment and IP rights in material from improper use– Unauthorized use– Commercial exploitation


What kind of Research material can be covered by an MTA?

TANGIBLE MATERIAL ONLY• Biological materials• Chemicals• Software• Data• Machinery• Designs• etc


Why isn’t material transfer informal/collegial?

• Transfer of materials can be informal (beg/borrow/steal)• Need to ensure common understanding for important

materials

• MTAgreements should be simple• Need to clarify use and ownership of materials• Need to maintain academic freedom in current and

future work (publish, research, teach)• Both scientists (provider and recipient) must live up to

contractual obligations


Avoid Misunderstandings:Different Objectives lead to

Different Expectations• Different institutions have different policies

– US federal labs, NIH support research, etc– universities vs. companies– Friends vs. Foes

• Different Materials need different levels of protection– proprietary/monetary value vs. altruistic intent


Different outcomes …2

• Different material inputs or expected outcomes may require different compensation/protection– No restriction on use/waiver of rights– Acknowledgement in publication– Fee for preparation of material– Handling fees– Reach-through ownership of derived materials– Prohibition of creating derived materials or outside

specified use


Do I need an MTA to send material to an academic colleague?

Questions to ask yourself:• Is material easily available?• Is ownership of the material easy to discern?• Are there no background rights or obligations?• Would you be happy for your colleague if s/he made a

significant discovery or invention and benefited from using your material?

• Is there low a risk/hazard associated with use of material?

If “no” to any of above:• MTA recommended to avoid disputes/liability


What MTA terms are frequently problematic?

• Restriction of academic freedom

• Assertion of excessive ownership rights by provider (or recipient)

• Demands of inappropriate indemnification or warranty by the University


How do MTA terms affect Academic Freedom?

• Publication restrictions– Review of manuscript/disclosure by provider

Allows the provider to:– Remove provider confidential information– Remove provider proprietary information– Identify new intellectual property rights

Unacceptable:– Unreasonable delays/publication restriction– Provider approval/control of publication/disclosures


What’s the big deal with ownership rights?

• Original physical material is property of the provider

• Providers sometimes assert they own/have rights to any new materials created by recipient– Reach though ownership– Automatic (free) license to derived materials/IP– Right to negotiate commercial ($$) license for

companies


Ownership Rights in MTA …2

• Need to be careful:– Define material, derivatives, modifications carefully– Ensure rights granted to the provider do not conflict

with rights of research sponsors or funding agencies– License obligates company to develop IP for public– University/Inventor is compensated appropriately– Obligation to provider must not preclude future

funding from specific sources (competitors)


Can I/the University forego Ownership rights?

• May wish to do so to expedite MTA process if:– New IP <<WILL NOT>> be derived, or– Commercialization not important to you

• Not always possible:– Background sponsor or collaborator

obligations may exist


How does loss of control of IP limit research?

• May affect future ability to attain funding, access material or collaborate with parties outside of provider-recipient relationship

• IP terms in MTA can restrict recipient from:– Accepting outside funding with IP obligations– Further disseminating material or derived material– Combining materials – Vesting or conferring IP rights in outside parties– Commercially exploiting research results


What’s the deal on Indemnification?

• Indemnification provisions release the provider from responsibility for damage due to action or inaction

• Shifts economic responsibility from provider to recipient of materials for use of the materials

• Provider must disclose any hazards associated with use of material

• Some provincial/state restrictions exist for public institutions regarding indemnification


Can costs be recovered for transfers?

• If materials are costly, it may be desirable to recover costs/charge a fee

• Can include a one-time fee in the MTA

• Granting agencies may have policies on deriving income from outcomes of sponsored research funding


What can I do for materials that require time and effort to supply?

• Some sponsors require outcomes of funded programs to be publicly available

• Deposit to publicly-supported or user-fee-supported facility (e.g. cells to ATCC)

• License to a company to sell as a reagent (e.g. monoclonal antibodies, hybridomas)– in return for shared revenue, supply of material back

to your lab or other consideration


What should an MTA include?

• Definition of the Material• Acceptable use of the Material• Ownership rights to:

– Material, – modifications to and derivatives of the material– inventions and discoveries arising from use of

material• Confidentiality• Publication rights of the research results• Liability, warranty, jurisdiction• Licensing terms for future use of the material


What can hold up getting an MTA in place?

• Negotiation of unusual terms

• Unrealistic expectations – (provider or recipient)

• Source of material– Is there a more accessible source?– Is it worth it to make the material yourself?


How about standardized MTAs?

• Can expedite process• Good for low-risk exchanges

– (university to university)– Non-profits

• Many universities already have a standard MTA

• Universal Biological MTA– Pre-negotiated standard agreement– May not be useful if third party rights exist– Both parties must have signed the pact


What do I do if I need an MTA?

• PROVIDING MATERIAL:– Contact ORS // We’ll forward a MTA to the Recipient– Information needed:

• Who are you transferring it to? Industry? University? • What Material would you like to send?• Is it your material?• Who funded the development of the material?• What uses will you allow of the material? Modification?• Is this a potentially inventive use?• Duration of permission to use• What’s the value of material? Do you want to charge a fee?• Do you have prior obligations to sponsors or collaborators?


What do I do if I need an MTA?

• RECEIVING MATERIAL:– Contact ORS // forward the MTA– Information needed:

• Who developed the material?• For what will you use the material? Modification?• Do you intend to combine it with materials with obligations to outside

parties?• Do you have funding arrangements for this research that may affect

your interaction with the Provider?• Is there any IP, patent applications or disclosures associated with

your use of the material?• Can you accept the obligations in the MTA?• Are there known hazards associated with use of material?• If the MTA is prohibitively restrictive, can you get the material from

another source?


Who signs the MTA?

• Legal agreement with institutional obligations

• University authorized signatory must sign to bind the institution– AVPA or designate

• Investigator must acknowledge terms and obligations

• Bring MTAs or requests to ORS

20041102MTA

Office of Research Services400 EPH

Heather Gallant, PhDCoodinator, Business Development, Contracts, Technology Transfer


Robert DirsteinDirector


20041102 mta sharing research materials in academia aka: everything you could want to know about...

Documents

use of material

different material inputs

material easy

use of specified material

original physical material

transfer of materials

different objectives

new materials