A Quick Guide to Material Transfer Agreements at UC Berkeley
A Material Transfer Agreement (MTA) is a contract that governs the transfer of tangible research materials between two organizations, when the recipient intends to use it for his or her own research purposes. The MTA defines the rights of the provider and the recipient with respect to the materials and any derivatives. Biological materials, such as reagents, cell lines, plasmids, and vectors, are the most frequently transferred materials, but MTAs may also be used for other types of materials, such as chemical compounds and even some types of software.
Three types of MTAs are most common at academic institutions: transfer between academic or research institutions, transfer from academia to industry, and transfer from industry to academia. Each call for different terms and conditions.
At Berkeley, the Industry Alliances Office (IAO) reviews and approves incoming MTAs. To expedite the process of negotiation, Berkeley investigators are asked to complete and sign an MTA Review Form and submit it with the MTA. All MTAs from Berkeley to other organizations are issued by the Office of Technology Licensing.
Exchange of materials between academic (or not-for-profit) institutions is relatively straightforward. To encourage the process of sharing research tools between scientists, the National Institutes of Health and the Association of University Technology Managers developed standard language to simplify material transfers, issued as the Uniform Biological Material Transfer Agreement (UBMTA). The UBMTA is used for many transfers between academic institutions. The UBMTA includes two sample letters: the Implementing Letter Agreement and the Simple Letter Agreement. The first is used for transfer of materials that are the subject of a patent or patent application or that have been or are likely to be commercially licensed. The Simple Letter Agreement is used for all other transfers.
Researchers often use materials provided by industry. For transfer of materials from industry, the campus is usually required to use the agreement written by the company providing the materials. An industrial MTA usually carries more restrictions than the UBMTA.
Industrial MTAs often contain language that conflicts with basic academic rights or that places unnecessary restrictions on investigators. Companies may ask to own all rights to inventions arising from use of the material or ask for exclusive rights to future inventions.
For these reasons, the IAO reviews, negotiates, and approves all MTAs from industry. Each industrial MTA is different and must be negotiated separately on a case-by-case basis, depending on the terms used in the agreement, the investigator’s obligations to the sponsor(s) of the research, and the use the investigator plans for the material.
Confidentiality: When confidential information is exchanged along with the material, the company may request that such information not be further disclosed. If the information is necessary for interpretation of the research results obtained using the material, that same information may also be required for publication of those results. Having agreed to hold the information confidential could prohibit an investigator from ever publishing the results of work using the company’s material.
Delay in publication: In order to protect potentially patentable inventions, companies often demand a review period for the investigator’s manuscripts, abstracts or hard-copies of presentation materials. This demand may jeopardize the timeliness of publication.
Use of materials in sponsored research projects: Many industry MTAs contain language that prohibits the use of the material in research that is subject to licensing or consulting obligations to any third party, including the sponsor of the research project.
Definition of material: The industry provider may propose a definition of material that includes not only the original material, but also modifications or derivatives made from the material that incorporate the investigator’s original ideas or concepts. If the provider also claimed ownership of the modified material, the provider could own the results of the investigator’s research. The investigator could be prevented from using research results in further research, transferring them to other organizations, meeting obligations to research sponsors, or ensuring that the results are made public.
Loss of control of intellectual property: If MTAs preempt ownership rights, investigators may be restricted in their ability to interact with a future sponsor or may have conflicts with obligations to current sponsors. Intellectual property restrictions may prevent the institution from obtaining or conveying rights to future licensees.
Conflicts with existing agreements: Industrial MTAs may contain obligations that conflict with obligations in a preexisting agreement. Also, the material may be used in conjunction with a separate material received under another MTA. These situations could result in granting two or more parties conflicting rights to the same invention.
When MTAs are used in conjunction with federally funded research, the federal government has certain rights to resulting inventions (Bayh-Dole Act).
MTAs for live animals or custom antibodies must have protocol(s) reviewed and approved by the Animal Care and Use Committee.
MTAs for human tissue must have protocol(s) reviewed by the Committee for the Protection of Human Subjects.
MTAs for hazardous materials and/or select agents must follow EH&S compliance procedures.
MTAs where the decision to undertake the research is based on receiving access to the material(s) from a nongovernmental provider must follow Conflict of Interest Committee requirements for financial disclosure.
The Office of Technology Licensing handles MTAs to transfer research materials from Berkeley to outside institutions. OTL ensures that the agreements conform with institutional research policies. OTL uses several formats for material transfer, depending on the intended use of the materials.