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MTA’s: BOTH SIDES NOW

MTA’s: BOTH SIDES NOW. Marjorie Forster , Assistant Vice President, Research and Global Health Initiatives, University of Maryland Baltimore M. Jeremy Trybulski , Consultant, formerly with the University of California, Office of the President

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MTA’s: BOTH SIDES NOW

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  1. MTA’s: BOTH SIDES NOW Marjorie Forster, Assistant Vice President, Research and Global Health Initiatives, University of Maryland Baltimore M. Jeremy Trybulski, Consultant, formerly with the University of California, Office of the President Melissa White, Contracts Manager, Senior Intellectual Property Specialist, Merrimack Pharmaceuticals, Inc.

  2. Overview of Agenda • Definitions • Obligations • Definitions & Obligations…GONE WILD!! • Taming Negotiations: Mutual Compromise

  3. MTA Definitions • Material • Progeny • Unmodified Derivatives • Modifications • Confidential Information • Research Results • Inventions

  4. Material* Original Material, as described herein, to include Progeny, Unmodified Derivatives, and Confidential Information * The definition CAN contain one or more of these elements, but not necessarily all

  5. Progeny Unmodified descendants from the Material

  6. Unmodified Derivatives Substances created by the Recipient in the course of the Research that constitute an unmodified functional subunit or product expressed by the Material

  7. Modifications Substances developed by the Recipient in the course of the Research that contain or incorporate the Material

  8. Confidential Information Any information, know-how, and/or documentation related to the Material that is provided by Provider to Recipient and is marked as “confidential” by Provider

  9. Research Results All research results created in the direct performance of Research defined in the Scope of Work

  10. Inventions Any patentable invention that is conceived AND first reduced to practice in the performance of the Research

  11. MTA Obligations Ownership Publication Confidentiality Licensing Rights

  12. What happens when THE “big bad wolf” ARRIVES?

  13. Definitions and Obligations… GONE WILD!!! “Material” includes know-how and information related to the Material Research Results Provider owns the Research Results and can use such for any purpose it determines Provider shall have a non-exclusive right to use the Research Results for any purpose it determines, provided, however, that (a) it does not publically disclose such Research Results in advance of publication by Recipient, and (b) it will consult Recipient prior to filing a patent application that includes the Research Results so that the Parties can assess inventorship, etc.

  14. Definitions and Obligations… GONE WILD!!! Modifications Provider owns Modifications that includes data and IP created USING the Material Licensing Rights Provider receives an outright grant of a license (exclusive or non exclusive) for anything conceived using the Material Recipient shall, and hereby does, grant to Provider a worldwide, non-exclusive license for non-commercial purposes…

  15. Definitions and Obligations… GONE WILD!!! Inventions • …shall mean any invention, whether patentable or not, that is conceived in the performance of the Research • …shall mean any invention that is conceivedand/or reduced to practice in the performance of the Research • *…shall mean any inventionthat necessarily uses or incorporates the Material (NUNI) • Provider owns all Inventions and shall require that the Recipient assign all right, title and interest in and to all Inventions to Provider • * NUNI language proposed by University, NOT industry

  16. Definitions and Obligations… GONE WILD!!! Publication • Recipient shall not publish or otherwise publically disclose the Research Results until it receives prior written authorization from Provider • Provider will have up to 60 days to review such publication submission… Confidential Information • *Recipient shall remove all Confidential Information of Provider from publication submission • … includes the Research Results and the MTA *This is usually a standard term, BUT University must handle it carefully…

  17. So how do you tame the “BIG BAD WOLF”? Negotiating… through Mutual Compromise 

  18. “Material” BEFORE: “Material” includes know-how and information related to the Material REMEMBER: “Material” CAN include Original Material, as described herein, its Progeny, Unmodified Derivatives, and Confidential Information…which may include KNOW-HOW and other information related to the Material! BUT such information MUST BE MARKED! AFTER: ALL information provided by Provider to Recipient related to the Material will be marked as “confidential” by Provider and be considered as Confidential Information of the Provider. All [such] information, if delivered orally, will be reduced to writing and marked as “confidential” by Provider within [14] [30] days of initial disclosure.

  19. Research Results BEFORE: Provider owns Research Results (and can use such for any purpose it determines) AFTER: • Recipient shall provide Provider with a summary of the Research Results (Deliverable) that will be owned by Provider. • Provider may have a time-limited, first right to negotiate a license for any Invention that necessarily uses or necessarily incorporates the Material.

  20. Modifications BEFORE: Provider owns Modifications that includes data and IP created using the Material AFTER*: Provider owns the Material (to include Original Material, Progeny, Unmodified Derivatives and Provider Confidential Information) Recipient owns IP and data created at Recipient’s facility, to include any BIP utilized in the course of the Research. *Cookie Dough Concept

  21. Modifications“Cookie Dough Concept” Material from Provider = Chocolate Chips IP created in the performance of the Research SOLELY by Recipient using the Material OR background IP of Recipient’s that is used in the performance of the Research = Cookie Dough Chocolate Chips + Cookie Dough = Chocolate Chip Cookies If a Chocolate Chip Cookie is created, Provider owns Chocolate Chips and Recipient owns Cookie Dough…

  22. Licensing Rights BEFORE: Provider receives an outright grant of a license (exclusive or non exclusive) for anything conceived USING the Material Provider owns all Inventions and shall require that the Recipient assign all right, title and interest in and to all Inventions to Provider. AFTER: Provider [may receive] or [shall be granted] a non-exclusive license to Recipient’s rights in and to all Inventions for non-commercial purposes Provider [may receive] or [shall be granted] a time-limited, first right to negotiate a commercial license to Recipient’s rights in and toall Inventions

  23. Inventions BEFORE: • …shall mean any invention, whether patentable or not, that is conceived in the performance of the Research • …shall mean any invention that is conceived and/or reduced to practice in the performance of the Research • …shall mean any inventionthat necessarily uses or incorporates the Material (NUNI) AFTER: • Any invention that is conceived AND first reduced to practice in the performance of the Research and is claimed in a patent application

  24. Publication BEFORE: Recipient shall not publish or otherwise publically disclose the Research Results until it receives prior written authorization fromProvider. Provider will have up to 60 days to review such publication submission… AFTER: Provider will be notified of any publications being made as a result of the Research Provider will have up to [30] [*45] days to review such publication submission and notify Recipient of any Confidential Information contained therein Recipient will remove all such Provider Confidential Information from publication submission of Research Results Recipient will acknowledge Material and authorship, appropriately, in any such publications . Co-authorship will be determined in accordance with standard academic practices and acknowledged in such publication, as appropriate • * 30 is THE STANDARD, but 45 is OK so long as the PI is aware and agrees in advance

  25. Confidential Information BEFORE: • Recipient shall remove all Confidential Information of Provider from publication submission upon Provider’s written request AFTER: • Recipient shall remove all Confidential Information of Provider from the publication submission upon Provider’s written request. Notwithstanding, Provider agrees to allow the use and disclosure of sufficient information regarding the identify, structure and properties of the Material to enable the complete and accurate publication of the Research Results by Recipient.

  26. Confidential Information BEFORE: “Confidential Information” includes the Research Results and the MTA AFTER: • Remain Silent!! • Public benefit • Universities do not do secret work

  27. Questions?

  28. THANKS!

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