Material transfer agreements

Sharing research reagents and materials is an everyday occurrence. It is also important to note that this is a necessary and accepted practice. However, almost every academic institution and all companies are paying much more attention to transfers of materials and the disposition of intellectual property rights associated with the work done with the transferred materials. It is important to understand the procedures set up at the University of Minnesota to expedite these agreements as well as ensure compliance with research agreements and protection of University intellectual property (IP) rights.

Sending Materials Out

When University of Minnesota personnel send out materials to an academic or industrial colleague, the Office for Technology Commercialization staff assists with these agreements. This is to ensure our IP rights are protected if there is: (a) existing IP relating to the materials or (b) the potential to create new IP. Transfers between academic (and other nonprofit) researchers are usually handled through a master agreement that most institutions have already agreed to, called the Uniform Biological Material Transfer Agreement (UBMTA). To facilitate the transfer, download and complete the (UBMTA) Implementing Letter (Word 6.0). This is a record of the biological material transfer, certifications that the organizations have accepted and signed an unmodified copy of the UBMTA, and agree to be bound by its terms.

 

The OTC staff also has agreements to use when transferring materials to a company. Please review the related information at: (http://www.research.umn.edu/techcomm/forms.htm) to initiate transfers of your material to a colleague.

Receiving Materials

If you are to receive materials from an outside source, a grant administrator SPA will handle the material transfer agreement. The reason SPA handles these requests is that the use of incoming materials will affect an ongoing sponsored research project and will need to be accounted for, in most cases. In order to get these MTAs started, the University of Minnesota requestor should send in an MTA Routing Form (MTARF--see following paragraph) along with a copy of the MTA agreement proposed by the sender. It is important that the funding agency account number be identified on the MTA Routing and Approval Form. If the funding source for the research changes at any point, it is essential that a new MTA Routing and Approval Form be submitted with this information. The agreement and MTA Routing and Approval Form are then forwarded to a grant administrator to negotiate and finalize.

The MTARF is available as a Web-based form in EGMS (Electronic Grants Management System; http://egms.umn.edu). The EGMS MTARF requires the use of the EGMS electronic routing feature for collecting approval signatures. For information about EGMS electronic routing, call the EGMS business helpline at 612.624.1033.

Consequences of MTAs for Inventions

Researchers who perform experiments with materials from outside collaborators need to be aware of the possible consequences. Most MTAs have provisions for management of inventions created using someone else's materials. In a case where company materials are used, the company may have a right of first refusal to license new inventions created with their materials or may have other rights to those inventions. In the case where materials are used from another academic or nonprofit organization under UBMTA, the University would need to negotiate a license with that organization before we could license companies to use our inventions concerning the material or modifications. An area of high concern and potential problems is when materials from two different sources are used in a project. In that case, it is likely that both sources will have some rights in the results of the project and those rights will conflict.

Materials Transferred without an MTA

Researchers occasionally exchange materials without an MTA. This can create significant problems. If you send material out without an MTA, the recipient may be able to use and transfer the materials and the research results without any restrictions. This may negate the licensing value of the materials for you and the University and may violate obligations that you and the University have concerning those materials if they were obtained from someone else or developed with sponsored funds. If you receive materials without an MTA, the provider may have unspecified assumptions concerning the use of the materials and the results, which can cause problems if the results have commercial value.

NIH Guidelines

Recognizing the importance of the transfer of "research materials" to academic research, the National Institutes of Health (NIH) recently issued "Principles and Guidelines for Recipients of NIH Research Grants and Contracts on Obtaining and Disseminating Biomedical Research Resources." These are guidelines, not mandatory rules. However, they do address the issues and concerns NIH sees and specifies NIH's recommendations. The document can be found at http://ott.od.nih.gov/policy/rt_guide_final.html.

While conducting a project which involves materials obtained through a MTA

If anything developing out of the project is patentable, OTC must be informed.

Keep careful laboratory records of which materials are used in which experiments, and who owns what. Before mixing materials owned by two or more different parties, obtain permission for the experiments from each party. This will probably require a third MTA, which a OTC staff member can help draft and negotiate.