Material Transfer Agreements

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Material Transfer Agreements

• HSC Pre-Award Office
• November 18, 2003

Prepared by Robert Bienstock RIPLS
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Big MTA Issues

• Intellectual Property
• Confidentiality
• Publication

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Intellectual Property Rights Overview

• Providers Want Resulting IP
• Business decisions
• Risks
• UNM sharing in proceeds
• Inconsistent obligations
• Tax-exempt bond liabilities

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IP Rights Who benefits?

• Business decisions
• What IP or options to give back?
• Limit to potential use of the material
• Never for anything created while using
• Provider can own progeny and Unmodified
  Derivatives
• Internal research use v. commercial use
• Who decides?

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IP Rights Inconsistent obligations

• Business decisions
• Inconsistent obligations
• Other MTAs
• Sponsored research agreements
• Affiliations (E.g., MIND Institute, Cancer Care
  Alliance)
• Use by nonUNM employees

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IP Rights Bond Liabilities

• Tax Exempt Bond Liabilities
• If building built with tax exempt bonds
• No more than 10 private business activity
• Tracking the 10 is a huge challenge
• PBA below-market price
• PBA Cant set price until invented
• Unless youd do it for everyone
• Or else bond becomes taxable retroactively

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Confidentiality Overview

• Ability to comply
• Loss of export control exemption
• Sponsor obligations

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Confidentiality Can we Comply?

• Ability to Comply
• Researchers
• Students (high risk)
• Others in lab
• Confidentiality as to what?
• Their stuff?
• Our results?
• Who decides?

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Confidentiality Export Controls

• Loss of export control exemption
• For materials (if thats whats confidential)
• For results (if thats what confidential)
• Check with Industrial Security if
• Materials related to biowarfare/bioterrorism
• Confidentiality of results

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Confidentiality Sponsors

• Review any sponsorship agreement for inconsistent
  obligations
• Consider reporting and publication obligations

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Confidentiality Publication Rights

• Confidentiality clauses can effectively restrict
  publication

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Publication Rights

• Restrictions threaten
• academic freedom
• export control exemption
• tax exempt bonds
• sponsor agreement compliance
• student academic credit