Material Transfer Agreements and Sponsored Research Agreements

1
Material Transfer Agreements and Sponsored
Research Agreements

• By Juan Torres

2
WHAT IS A MATERIAL TRANSFER AGREEMENT(MTA)

• Legal contract governing the transfer of
  proprietary material from one party to another.
• Protects the provider (organization providing the
  material) from liability.
• Often gives providers certain rights in research
  results.
• Imposes restrictions on use and further transfer.
  

3
Under What Circumstances is an MTA Needed?

• The material and/or information is
• Proprietary, and/or
• is being maintained as a trade secret, and/or
• material is infectious, hazardous or subject to
  special regulations
• The provider
• is concerned about potential liability, and/or
• wishes to obtain rights to the results of the
  research in which the material or information to
  be used, and or
• wishes to ensure that correct and appropriate
  acknowledgement is included in any publication
  regarding the use of the materials.

4
Types of MTAs

• Incoming MTA governs the transfer of material
  from one organization to WCMC. Many companies
  and non-profit organizations (Providers)
  require a MTA before they will share their
  materials.
• Outgoing MTA governs the transfer of materials
  for research purposes from WCMC to researchers
  outside of WCMC (at either non-profit
  organizations or industry).
• http//www.med.cornell.edu/research/gra_con/mat_tr
  a.html

5
MTA Templates

• UBMTA (Uniform Biological Material Transfer
  Agreement)
• Created in order to streamline academic to
  academic transfers of material.
• Master Agreement signed once.
• Master Agreement has comprehensive set of
  clauses.
• Implementing letter covers specific transfers.
• Very rapid procedure for signatory institutions.
• Simple Letter Agreement
• One page MTA covering the minimum provisions for
  a transfer.

6
From the University Perspective, What MTA Terms
Frequently Raise Problems?

• Universities typically avoid terms that
• Assert excessive rights of ownership in the
  research results
• Create conflicting obligations (with other
  sources of funds or materials)
• Restrict academic freedom, such as restrictions
  on publication
• Ask for inappropriate indemnification by the
  University

• Most significant issues
• Confidentiality obligations
• Publication restrictions
• Indemnification
• Choice of law

7
Who Has the Authority to Sign MTAs?

• All MTAs must be signed by an authorized
  institutional official.
• MTAs that are not signed by the institutional
  official are not valid, and may make the signor
  personally responsible for any breach of the
  terms and obligations of the MTA.
• Since the researcher utilizing the materials is
  responsible for fulfilling most of the
  obligations under an MTA, he or she must also
  sign the agreement.
• Research fellows or post docs CANNOT sign MTAs.

8
What to submit to GCO

• Completed routing form
• Contact information at the company/organization/in
  stitution (needed in order to negotiate terms of
  the MTA)
• Hard copy/electronic version of MTA

9
Sponsored Research Agreements(SRAs)

• Binding contract between WCMC and an industrial
  sponsor whereby the sponsor provides funding to
  WCMC to conduct a specific research project in
  exchange for deliverables from the project.
• A single faculty member must be designated
  Principal Investigator on each agreement.
• Co-Principal Investigator is not acceptable

10
Procedure for SRAs

• After agreeing on conducting a research project
  with a sponsor the PI research administrator
  should submit the following to the GCO
• A completed Research Application Routing Form
• Study Specific Financial Disclosure forms for key
  personnel listed on project.
• A statement of work or protocol
• A detailed budget, including both direct and
  indirect costs,negotiated between the department
  and sponsor.
• A hard copy/electronic version of the agreement
  (if one has been provided by Sponsor).
• Contact information for contact at Sponsor who
  will handle the negotiations

11
Grants and Contracts SRA Process

• After receiving the required documentation, GCO
  either sends the sponsor WCMCs SRA template or
  works from the sponsors agreement to make sure
  it is in accord with University research
  policies.
• The length of time it can take to negotiate an
  SRA will usually vary. Some of this depends on
  whether there is a significant gap between
  University and sponsor policies. In some
  instances certain points in the SRA might require
  the investigator to be involved in the
  negotiations. GCO is committed to making the
  cycle of contract negotiations as short as
  possible, without compromising University
  policies and interests.
• Once the terms of the agreement are final, the PI
  signs acknowledgement, the Associate Treasurer
  signs on behalf of the University, and GCO sends
  the agreement back to the sponsor. Once fully
  executed, copies are distributed to all parties.

12
Problematic Provisions in a Contract

• Indemnification
• Rights in Data and Reports
• Publications
• Patent Rights
• Governing Law

13
Problematic Provisions in a Contract

• Indemnification
• WCMC does not offer contractual
  indemnification being a non-profit educational
  institution, devoted to research and education.
• Publications
• The University is committed to maintaining
  the freedom of its faculty and students to
  publish the results of their research in a
  meaningful and timely manner. Thus, WCMC cannot
  agree to contract terms that may prevent its
  researchers from publishing or that give the
  sponsor authority to modify or approve proposed
  publications. A sponsor may seek a short delay
  to comment upon and to review publications for
  disclosure of its proprietary data or for
  potentially patentable inventions.
•  

14
Problematic Provisions in a Contract

• Rights in Data and Reports
• All rights in data arising from WCMC
  employment or the use of WCMC resources belong to
  the University. As an academic institution, the
  University must ensure that the data, information
  and materials generated during the course of
  research remain widely available for academic
  dissemination and scientific validation.
  Retaining rights to such research products allows
  the University to ensure that its faculty can
  pursue their research without undue impediments.
• Patent Rights
• The basic aim of the Universitys
  intellectual property policies is to promote the
  progress of science and technology, to assure
  that discoveries and inventions are used to
  benefit the public, to provide appropriate
  royalty revenues to the University and the
  Inventor, and to support University research and
  education through the use of invention-related
  income.

15
Problematic Provisions in a Contract

• Governing Law
• The body of law of a particular jurisdiction
  which governs the rights and responsibilities of
  parties in a given situation. Within limits
  parties may, by contract, choose which
  jurisdiction's law will govern matters related to
  contract formation, interpretation, and
  enforceability.