The ABCs of MTAs (Material Transfer Agreements)
Material Transfer Agreements at the University of North Florida
A Material Transfer Agreement (MTA) is a contract that governs transfer of tangible research materials between two organizations, when the recipient intends to use that material for his or her own research purposes. An MTA defines the rights of the provider and the recipient with respect to the materials, any derivatives, and often publication rights. 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, some types of software, and data.
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 type of MTA calls for different terms and conditions.
At UNF, the Office of Research and Sponsored Programs often works with Environmental Health and Safety Office to route, review, and obtain approval of incoming and outgoing MTAs. The Assistant Vice President for Research, is the UNF Institutional Official (IO) responsible for the approval of MTAs. Therefore, we ask that researchers planning to exchange research materials should contact the Office of Research and Sponsored Programs for assistance in expediting the negotiation of MTAs.
Why is an MTA needed?
- Material Transfer Agreements (MTAs) protect researchers and institutions that send or receive materials. Unauthorized use of patented material in research could potentially result in a patent infringement action against you and/or the University of North Florida. By completing an MTA, you and your research partners are documenting permission to use the material thus reducing the possibility of miscommunication.
- MTAs also allow for the proper tracking of research materials (e.g., cell lines, chemical compounds, concrete, software, data), compliance with individual terms and conditions on use, and protection of intellectual property interests of both recipient and provider of materials.
- "Usually the owner of patented material is the researcher's university or organization. Receiving material from a researcher, even if he/she is the developer of the material, without a written MTA could infringe on a patent owned by the researcher's university or organization" (Indiana University).
Content partially adapted from the Office of Research Administration at Indiana University .
Material Transfer Agreements between UNF and other academic institutions
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 have been or are likely to be commercially licensed. The Simple Letter Agreement is used for all other transfers.
The UNF subscribes to the UBMTA and due to this subscription, the processing of agreements takes less negotiation between institutions, thus reducing the processing timeline.
Material Transfer Agreements from industry to the University of North Florida
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 IO, often in concert with EH&S, 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.
Potential concerns with MTAs
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, link provided below).
MTAs for live animals or custom antibodies must have protocol(s) reviewed and approved by the Institutional Animal Care and Use Committee (IACUC).
MTAs for human participant research must have protocol(s) reviewed and approved by the Institutional Review Board (IRB).
MTAs for rDNA must have protocol(s) reviewed and approved by the Institutional Biosafety Board (IBC).
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 material(s) from a nongovernmental provider must comply with UNF’s Regulation on Conflicts of Interest and Outside Employment/Activity (4.0170R).
Material transfer from UNF to industry
The Office of Research and Sponsored Programs handles MTAs to transfer research materials from UNF to outside institutions. ORSP ensures that these agreements conform with institutional research policies. ORSP uses several formats for material transfer, depending on the intended use of the materials.
MTAs Governing Incoming Materials
The Office of Research and Sponsored Programs
Council on Governmental Relations:
Materials Transfer in Academia
Uniform Biological Materials Transfer Agreement (UBMTA)
National Institutes of Health:
Principles and Guidelines for Recipients of NIH Research Grants and Contracts on Obtaining and Disseminating Biomedical Research Resources
Rights to Inventions Made by Nonprofit Organizations and Small Business Firms under Government Grants, Contracts, and Cooperative Agreements—Patents, Trademarks, and Copyrights - 37 CFR Part 401
Please contact the Office of Research and Sponsored Programs prior to transferring material into or out of the UNF campus. For further information place contact our office at 620.2455.
Content partially adapted from MTA documents at UC Berkeley.