Sharing Research Materials in Academia

1. Sharing Research Materialsin Academia AKA: Everything you could want to know about Materials Transfer Agreements

2. Office of Research Services400 EPH Heather Gallant, PhD Coodinator, Business Development, Contracts, Technology Transfer 416-979-5000 ext 7521 hgallant@ryerson.ca Robert Dirstein Director 416-979-5000 ext 7609 dirstein@ryerson.ca

3. What is a Materials Transfer Agreement (MTA)? • Contract between provider and recipient • A form of license: • Permits use of specified material for specific purpose (usually research) • Protects the provider’s investment and IP rights in material from improper use • Unauthorized use • Commercial exploitation

4. What kind of Research material can be covered by an MTA? TANGIBLE MATERIAL ONLY • Biological materials • Chemicals • Software • Data • Machinery • Designs • etc

5. Why isn’t material transfer informal/collegial? • Transfer of materials can be informal (beg/borrow/steal) • Need to ensure common understanding for important materials • MTAgreements should be simple • Need to clarify use and ownership of materials • Need to maintain academic freedom in current and future work (publish, research, teach) • Both scientists (provider and recipient) must live up to contractual obligations

6. Avoid Misunderstandings:Different Objectives lead to Different Expectations • Different institutions have different policies • US federal labs, NIH support research, etc • universities vs. companies • Friends vs. Foes • Different Materials need different levels of protection • proprietary/monetary value vs. altruistic intent

7. Different outcomes …2 • Different material inputs or expected outcomes may require different compensation/protection • No restriction on use/waiver of rights • Acknowledgement in publication • Fee for preparation of material • Handling fees • Reach-through ownership of derived materials • Prohibition of creating derived materials or outside specified use

8. Do I need an MTA to send material to an academic colleague? Questions to ask yourself: • Is material easily available? • Is ownership of the material easy to discern? • Are there no background rights or obligations? • Would you be happy for your colleague if s/he made a significant discovery or invention and benefited from using your material? • Is there low a risk/hazard associated with use of material? If “no” to any of above: • MTA recommended to avoid disputes/liability

9. What MTA terms are frequently problematic? • Restriction of academic freedom • Assertion of excessive ownership rights by provider (or recipient) • Demands of inappropriate indemnification or warranty by the University

10. How do MTA terms affect Academic Freedom? • Publication restrictions • Review of manuscript/disclosure by provider Allows the provider to: • Remove provider confidential information • Remove provider proprietary information • Identify new intellectual property rights Unacceptable: • Unreasonable delays/publication restriction • Provider approval/control of publication/disclosures

11. What’s the big deal with ownership rights? • Original physical material is property of the provider • Providers sometimes assert they own/have rights to any new materials created by recipient • Reach though ownership • Automatic (free) license to derived materials/IP • Right to negotiate commercial ($$) license for companies

12. Ownership Rights in MTA …2 • Need to be careful: • Define material, derivatives, modifications carefully • Ensure rights granted to the provider do not conflict with rights of research sponsors or funding agencies • License obligates company to develop IP for public • University/Inventor is compensated appropriately • Obligation to provider must not preclude future funding from specific sources (competitors)

13. Can I/the University forego Ownership rights? • May wish to do so to expedite MTA process if: • New IP <<WILL NOT>> be derived, or • Commercialization not important to you • Not always possible: • Background sponsor or collaborator obligations may exist

14. How does loss of control of IP limit research? • May affect future ability to attain funding, access material or collaborate with parties outside of provider-recipient relationship • IP terms in MTA can restrict recipient from: • Accepting outside funding with IP obligations • Further disseminating material or derived material • Combining materials • Vesting or conferring IP rights in outside parties • Commercially exploiting research results

15. What’s the deal on Indemnification? • Indemnification provisions release the provider from responsibility for damage due to action or inaction • Shifts economic responsibility from provider to recipient of materials for use of the materials • Provider must disclose any hazards associated with use of material • Some provincial/state restrictions exist for public institutions regarding indemnification

16. Can costs be recovered for transfers? • If materials are costly, it may be desirable to recover costs/charge a fee • Can include a one-time fee in the MTA • Granting agencies may have policies on deriving income from outcomes of sponsored research funding

17. What can I do for materials that require time and effort to supply? • Some sponsors require outcomes of funded programs to be publicly available • Deposit to publicly-supported or user-fee-supported facility (e.g. cells to ATCC) • License to a company to sell as a reagent (e.g. monoclonal antibodies, hybridomas) • in return for shared revenue, supply of material back to your lab or other consideration

18. What should an MTA include? • Definition of the Material • Acceptable use of the Material • Ownership rights to: • Material, • modifications to and derivatives of the material • inventions and discoveries arising from use of material • Confidentiality • Publication rights of the research results • Liability, warranty, jurisdiction • Licensing terms for future use of the material

19. What can hold up getting an MTA in place? • Negotiation of unusual terms • Unrealistic expectations • (provider or recipient) • Source of material • Is there a more accessible source? • Is it worth it to make the material yourself?

20. How about standardized MTAs? • Can expedite process • Good for low-risk exchanges • (university to university) • Non-profits • Many universities already have a standard MTA • Universal Biological MTA • Pre-negotiated standard agreement • May not be useful if third party rights exist • Both parties must have signed the pact

21. What do I do if I need an MTA? • PROVIDING MATERIAL: • Contact ORS // We’ll forward a MTA to the Recipient • Information needed: • Who are you transferring it to? Industry? University? • What Material would you like to send? • Is it your material? • Who funded the development of the material? • What uses will you allow of the material? Modification? • Is this a potentially inventive use? • Duration of permission to use • What’s the value of material? Do you want to charge a fee? • Do you have prior obligations to sponsors or collaborators?

22. What do I do if I need an MTA? • RECEIVING MATERIAL: • Contact ORS // forward the MTA • Information needed: • Who developed the material? • For what will you use the material? Modification? • Do you intend to combine it with materials with obligations to outside parties? • Do you have funding arrangements for this research that may affect your interaction with the Provider? • Is there any IP, patent applications or disclosures associated with your use of the material? • Can you accept the obligations in the MTA? • Are there known hazards associated with use of material? • If the MTA is prohibitively restrictive, can you get the material from another source?

23. Who signs the MTA? • Legal agreement with institutional obligations • University authorized signatory must sign to bind the institution • AVPA or designate • Investigator must acknowledge terms and obligations • Bring MTAs or requests to ORS

24. Office of Research Services400 EPH Heather Gallant, PhD Coodinator, Business Development, Contracts, Technology Transfer 416-979-5000 ext 7521 hgallant@ryerson.ca Robert Dirstein Director 416-979-5000 ext 7609 dirstein@ryerson.ca