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Background
A Material Transfer Agreement (known as MTA) is a contract governing
the transfer of a tangible material from a provider to a recipient.
Examples of tangible materials are plant or microbial cultures, plasmids,
nucleotides, proteins and chemicals. In the case of the University
of Georgia and the University of Georgia Research Foundation, Inc.
(UGARF) an MTA would be with another university, a non-profit organization
or a company.
It is essential that an MTA be put in place before materials are sent
to a recipient or accepted from a provider. The purpose of an MTA is
to avoid misunderstanding between the parties and to protect the interests
of both parties.
An MTA should address the following topics:
- Description of the material. Provide a description that can be
well understood and interpreted at a later date should questions
arise about
the identification of the materials.
- Definition of progeny, modifications
and derivatives of the material. Because many of the materials
being transferred are biological in
origin, the MTA should clarify not only what the material is but
also how progeny,
modifications and derivatives are governed under the MTA.
- Agreement
by the recipient to not transfer the material to any third party.
This is fundamental to the reason for having an MTA
and would
be expected by any providing party.
- Description defining and limiting
the recipient’s use of
the material for a specified purpose. Usually, the materials are
being
provided for research use only and for a specified field of research.
(The University of Georgia Research Foundation, Inc. uses MTAs to
provide proprietary materials to a company in order for the company
to determine
if it is interested in obtaining a license from UGARF for commercial
use.)
- Ownership of data and freedom to publish. Some MTAs from companies
will include language granting ownership of the data to the company.
Some of these MTAs also limit the researchers right to publish
his/her research results. These terms should not be accepted and
can usually
be modified by negotiation.
- Ownership of intellectual property arising
from use of the materials. Some MTAs will define the provider as
the owner of any intellectual
property developed by use of the materials. Except in unusual circumstances,
this is not acceptable and rights to intellectual property should
be determined by inventorship. It is sometime reasonable for a company
providing a material to be granted an option to obtain a license
to
inventions developed at UGA by use of the company’s material.
This option would be granted with restrictions which protect the
interest of the university and comply with appropriate regulations.
- Reports
of the results of the use of the material. It is reasonable for
the provider to require a report from the recipient on the results
of their use of the materials.
- Agreement to the legal jurisdiction
that governs the agreement. UGARF and UGA cannot agree to any jurisdiction
other than the State
of Georgia.
We often receive MTAs that require the jurisdiction of the providing
party’s state. This can usually be addressed by negotiation.
- Indemnification
and liability of the parties. UGARF and UGA cannot agree to indemnify
or hold harmless the providing or recipient institution.
This sometimes presents difficulties with companies but we are
generally successful in removing that requirement.
- Termination of the agreement
and whether the materials should be returned or destroyed by the
recipient upon termination. It is desirable
to be explicit about the date of termination and the required disposition
of the materials upon termination.
- An MTA may also contain a definition
of “confidential information” and
include terms that require both parties to protect the confidential
information of the other party. When only information and no material
are being transferred it is more appropriate to use a Confidentiality
Agreement.
Process for Completing a Material Transfer Agreement
If you are the recipient of an MTA, forward all original copies to
the Technology Commercialization Office (TCO), attention Kim Fleming,
627 Boyd Graduate Studies Research Center. The MTA will be reviewed,
negotiated for changes if necessary and signed by an authorized official
at UGA. You can mail the MTAs via campus mail or send an electronic
version to kimf@uga.edu.
A form called “Request for Institutional Approval” will
need to be completed and attached with the MTA. Your original signature
is required on the form; therefore, the form must be sent via mail.
The form can be found here
(MS Word Document).
TCO will return the MTA to the providing company or university for
signature. A copy of the fully executed MTA will be mailed to you with
a cover letter reminding you of the confidentiality clause. The original
MTA will be kept in TCO. You may call (706) 542-5929 if you have any
questions regarding the MTA process.
If you wish to send materials to a recipient, please fill out the “Request for Institutional Approval” form, sign, and send to TCO, attention Kim Fleming. A technology manager in TCO will prepare
(and negotiate, if needed) the MTA and obtain the signatures from the
company or university. Upon receiving the fully executed MTA, a copy
will be sent to you for your files.
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