Material Transfer Agreements

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• Material Transfer Agreements
• Protecting your research with MTAs
• Neil Veloso
• Licensing Manager
• Patrick Klepcyk
• Licensing Associate
• Technology Transfer Office

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What They Are

• Provider Recipient
• (Material)
• Issues Involved
• Use/ control of material
• Ownership issues
• Other legal considerations

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Use/Control of Materials

• Provider may choose to
• - restrict use of material for specific project
• - restrict use to specific people
• - restrict ability of Recipient to transfer
  material
• - require Recipient to report results
  (publications) or inventions to the Provider (may
  result in publication delays).

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Ownership Issues

• Provider will retain ownership of materials but
  may also
• - Claim ownership of improvements and
  derivatives of Material
• Claim ownership of inventions made through use of
  material
• Claim ownership of data and results from use of
  Material
• THERE ARE SERIOUS CONSEQUENCES FROM THESE TERMS

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Other Legal Considerations

• Indemnification
• - who faces liability for use or transport of
  the Material
• Warranty
• - Material is being provided as is. (Its not
  guaranteed to work!)
• Parties
• - MTA is an agreement between Case and the other
  party.

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Types of MTAs

• Academic Academic
• - UBMTA
• - Case MTA
• - Foreign Universities
• Academic Institution Industry
• - usually more restrictive
• - requires time to negotiate

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Negotiating MTAs

• Use/Control of Materials
• How you handle the material
• - for specific research
• - usually cant be transferred
• Publications may need to submit advanced copies
  to company

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• Ownership Issues
• Materials What the MTA covers (beware of broad
  definitions)
• Intellectual property
• - assigning ownership
• - non-exclusive license

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• Other Legal Considerations
• Warranty The material is being provided as
  is.
• Indemnification Covers who is responsible for
  damages or liability (idea of gross negligence).

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What Materials require a MTA

• MTAs are always required in any transfer of
  materials
• - cell lines
• - antibodies
• - vectors
• - database information (HIPAA!)
• - software

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Who can sign them?

• A delegated authority of Case with signatory
  authority (someone who can enter the University
  into legal contracts).
• - AVP for Technology Transfer
• - AVP for Research
• - VP for Research and Technology Transfer
• - Provost
• - President

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How do I get started?

• MTA review form
• Gives the basic information needed to start
  working on the agreement (material requested,
  parties involved, contact info).
• On our website (techtransfer.case.edu)

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Whats next?

• Submit the review form and paper copies of the
  MTA to
• Neil Veloso
• Technology Transfer Office
• Sears Library Building Room 650
• Location Code 7219
• If by email, then neil.veloso_at_case.edu
• - FAX the signed review form (368-0196)

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How you can speed things up

• Getting material from other U.S. universities
• UBMTA Send a filled out UBMTA Implementing
  Letter to the other P.I.
• When we receive a review form and a UBMTA, we aim
  to have the agreement signed and sent out the
  same day.

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• 2) Getting Material from foreign universities
• - Request other scientist to provide contact
  information for their technology transfer or
  research office

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• 3) Getting material from companies
• Identify the company contact who handles
  transfers
• Consider other sources
• Prepare in advance

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When Transferring your materials

• If you receive requests for Materials
• 1) from other academics
• Both UBMTA and Case agreements are acceptable but
  the Case agreement has one advantage.
• 2) and the Material is related to an invention
  disclosure
• Discuss situation with your case manager
• 3) from private biotechs or pharma
• Contact the tech transfer office

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Thanks for your time!

• Website http//techtransfer.case.edu
• Contact Information
• Neil.veloso_at_case.edu 216-368-2026
• Patrick.klepcyk_at_case.edu 216-368-1401