IF your internal procedures can be made rather simple to handle this, I'd
suggest
1) One MTA for each batch of samples or even for several batches to one
company, with an attached list of compounds; your internal records would
show the sources and therefore any royalty routings.
2) MTA should cover ONLY testing/research purposes, with separate
licensing agreement for each compound found applicable for company; MTA
should be non-exclusive (different companies might test, and find useful
for different purposes, and resulting license can be use-specific.
3) For pricing for the MTA only, clearly collect costs of making (NOT
developing) samples and shipping. (Any costs of developing that were
collected would be program income if developed under federal grants, and
cause major accounting headache -- decide if it is worth it to undertake
that problem when making decision!)
4) Do not set royalty rate in MTA. Royalty should be related to the
specific situation you are licensing for, after you know what it
is. Situations can be so different as to use that no one-size-fits-all
solution works. And consider carefully what intellectual property you have
and how you should protect it before doing the MTA.
Chuck
At 02:21 PM 1/22/2004, you wrote:
>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
>
>
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>R. Steven Etheredge, Associate Director
>Sponsored Programs & Research
>University of South Carolina
>(803) 777-4457
>(803) 777-4136 fax
><mailto:xxxxxx@gwm.sc.edu>xxxxxx@gwm.sc.edu
Herbert B. Chermside, CRA
Virginia Commonwealth University
PO BOX 980568
Richmond, VA 23298-0568
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