Steve,

It seems too soon to start charging royalties on a compound that the company only wants to screen, this may scare them off.  You can sign a "material transfer agreement" with a discrete evaluation period.  The MTA should have full confidentiality language incorporated, as well as an inventions clause which give you ownership (or partial ownership) of anything that is discovered by the company.  You can have a separate MTA for each compound or for the "family" of compounds.  Also - since you're dealing with industry, not academia, a sponsored research agreement is not really appropriate, you'll be selling yourself short - unless it has clear language that leads to licensing if the evaluation proves positive.

If the evaluation is positive, that would be the time to negotiate a licensing agreement for the specific field of use the company would like.

Hope this was helpful,

Alex Schoen
-----------------------------------------
Alexander Schoen
Director, Office of Sponsored Programs
Winthrop-University Hospital
222 Station Plaza North, Suite 510
Mineola, NY  11501
Phone: (516) 663-8997
Fax:     (516) 663-9718
xxxxxx@winthrop.org

-----Original Message-----
From: Steven Etheredge [mailto:xxxxxx@GWM.SC.EDU]
Sent: Thursday, January 22, 2004 2:21 PM
To: xxxxxx@HRINET.ORG
Subject: [RESADM-L] MTA issues

Dear Colleagues:

At our institution, we have a situation where several of our faculty have created compounds in their research with internal funding.  While the compounds failed to be useful for their intended use because of toxicity problems, we have been approached by industry about obtaining these compounds for screening to determine if they demonstrate activity in the industry's area(s) of intended use.  In past times we have provided compounds for such screenings under sponsored research agreements.

We now believe that such should be handled as MTA's.  Based on that fact, we have encountered several questions/issues with which we need to deal.  Those issues are:

1.  Is a disclosure required for each compound sent for screening?  If not, how do you deal with issues related to inventorship/royalty distribution if one of the compounds turns out to be a "winner?"

2.  How do we determine the total costs to charge industry for the compounds?  Should it be a combination of actual costs + royalties (plus shipping costs)?  The assumption would be that we would of course collect actual costs first.

These are not the only issues, but ones for which we seek your advice and counsel.

Thanks for your help.

Steve Etheredge

====================================================================== Instructions on how to use the RESADM-L Mailing List, including subscription information and a web-searchable archive, are available via our web site at http://www.hrinet.org (click on "Listserv Lists") ======================================================================

R. Steven Etheredge, Associate Director
Sponsored Programs & Research
University of South Carolina
(803) 777-4457
(803) 777-4136 fax
xxxxxx@gwm.sc.edu

CONFIDENTIALITY NOTICE:
This transmission is intended only for the individual or entity to which it is addressed and contains information that is confidential.  If you have received this communication in error, please notify the sender at the email address above and delete this email immediately.  This information has been disclosed to you from confidential records and is protected by federal and state law.  This information may include confidential mental health, substance abuse, alcohol abuse and/or HIV related information.  Federal and state law prohibits you from making any further disclosure of this information without the specific written consent of the person to whom it pertains, or as otherwise permitted by law.  Any unauthorized further disclosure in violation of the law may results in a fine or jail sentence or both.  A general authorization for the release of this information may not be sufficient authorization for further disclosure.

======================================================================
 Instructions on how to use the RESADM-L Mailing List, including
 subscription information and a web-searchable archive, are available
 via our web site at http://www.hrinet.org (click on "Listserv Lists")
======================================================================