University-Industry Contracting “How-To” Webinar Series

Next Webinar: Material Transfer Agreements

Tuesday, October 30, 2012 at 1:00 pm EDT

The UIDP University-Industry Contracting "How-To" webinars series continues on Tuesday, October 30, at 1:00 PM EDT with a discussion of Material Transfer Agreements (MTAs).

Register Here: http://center.ncet2.org/index.php?option=com_joomla_lms&Itemid=53&task=course_guest&id=72

Material transfer agreements are contracts which govern the transfer of tangible materials for use in research, such as chemical compounds, living organisms, seeds, devices as well as biological materials that may be consumed in the course of the research - such as proteins, antibodies, cell lines and tissues.

The speakers for this webinar will be Terry Stout, Director of the Office of Industry Collaborations & Affiliated Licenses at Georgia Tech Research Corporation and Terri Welker, Senior Contract Manager at Monsanto Company.  They will introduce which elements are needed to correctly set up a MTA, starting from a proper definition of the material in question, its intended use as well as control over its use, possible dissemination and disposal.  They will also discuss common issues that arise, as well as certain concepts and language best to avoid in an MTA:

>  Access to Foreground IP (“FIP” - see previous webinar on October 2) and ownership rights to new materials created by the recipient of the transferred materials are often dependent upon the way this material is defined.  Companies may expect intellectual property rights that are similar to those for sponsored research (i.e. broader) – however, the scope of rights provided under an MTA are typically more narrow and very specifically related to the transferred material.
>  It is therefore important to consistently draft and enforce confidentiality and sponsored research agreements in this regard to properly protect the company’s IP.  The company may otherwise not have ownership and/or control of any new material or any properties of the new material which are derived from the original material.  A university cannot protect trade secrets, so companies should never provide materials that are protected by trade secrets.
>  In some cases the University may agree to grant a non-exclusive, royalty-free (NERF) license to IP that is dependent upon the material as defined. For example, IP could be that which “necessarily uses or incorporates the material,” which is a “new use of, improvement to, or new formulation of the material,” or IP that is needed for company to “make, use, or sell the material.”
>  Publications by industry or academic scientists describing results which are dependent upon a unique material create an expectation or desire on the part of the authors to make those materials available to other researchers. The university’s freedom to publish should not be compromised by use of a company’s material in the research.   Therefore terms in the MTA that limit disclosure of the material or associated company information to the extent that publication of the research would be entirely precluded are not appropriate (see previous webinar on Publications on July 24).
>  The university should ensure that funding agreements used to support the work do not contain obligations which conflict with the terms of the MTA.   The parties should determine whether the material is subject to export control regulations and agree to assist each other on complying with those regulations (see previous webinar on Export Control on September 18).

You can sign up for this webinar or the entire series by visiting http://center.ncet2.org/index.php?option=com_joomla_lms&Itemid=53&task=course_guest&id=72.

We look forward to your participation.

======================================================================
 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.healthresearch.org (click on the
 "LISTSERV" link in the upper right corner)

 A link directly to helpful tips:  http://tinyurl.com/resadm-l-help
======================================================================