Material Transfer Agreements

A Material Transfer Agreement (MTA) is the contractual instrument used to define the terms and conditions for the exchange of materials. The Office of Technology Transfer reviews, negotiates, and executes hundreds of MTAs for UofL faculty and staff each year.

We understand that each researcher has individual needs and interests related to these types of research agreements. Our team members work through these agreements on a case-by-case basis, helping to identify individual research goals and expectations, as well as conflicting funding or other agreements. We do our best to negotiate fair, tailored terms for use of materials in a timely manner so that no unnecessary delays are experienced.

If you need an MTA, please contact the Office of Technology Transfer at 502-852-2965 or email our OTT service account. When emailing us, please forward any correspondence you have had with the other party, along with any draft agreements that were provided.

 

Background

On its face, a Material Transfer Agreement (MTA) may appear to be a somewhat inconsequential agreement: no money is transferred in the exchange (except for the occasional recoupment of costs to prepare and ship the materials); only physical possession – not ownership – of the material is transferred by the provider to the recipient; and the constant exchange of ideas and information inherent in academia may cast an artificial lightness on the relationship that forms when materials are transferred from one laboratory to another.

Despite this perception, an MTA can create significant issues for recipient scientists and university-created intellectual property, with a variety of strings included in its terms that may bind a recipient’s research results or products to the provider of the material.

Transfers between universities and non-profit institutions are often made under the Uniform Biological Material Transfer Agreement (UBMTA), a form developed by the National Institutes of Health (NIH). Over 400 universities and other non-profit institutions (UofL included) are signatories to the UBMTA, signifying their acceptance of the UBMTA terms. The terms contained in the UBMTA are generally viewed as fair and reasonable to both the provider of the material to be transferred and the recipient.

Although the UBMTA should (and often does) expedite the transfer of materials between its signatories, many non-profits and universities forego using the UBMTA and provide their own terms for the use of materials. Further negotiation of terms may be required.

In addition to materials received from non-profit providers, the Office of Technology Transfer works regularly with private industry to bring materials into UofL laboratories. Often, the MTAs provided by private companies contain more restrictive language than MTAs negotiated between universities and non-profit institutions. Apart from more legal concerns, such as governing law and indemnification matters, the MTAs may contain terms that directly impact university researchers. These may include (but are not limited to) terms related to ownership of resulting data or research products; terms that conflict with researchers’ funding agreements; and terms that may inhibit a researcher’s ability to publish data derived from his or her studies. These potential problems terms are discussed in greater depth, below.

 

Intellectual Property Ownership

The handling of university intellectual property is governed by the University of Louisville Intellectual Property Policy and may be governed by the Bayh-Dole Act (35 U.S.C. §§ 200-212), if federal funds are used for research. We are unable to accept assignment or exclusive licensing of intellectual property resulting from university research under an MTA. Apart from potential conflicts with federal funding terms (allowing for a limited non-exclusive license to be granted back to the funding agency), assignment or exclusive licensing may prevent a university researcher from continuing his or her studies in a particular field, as further use of his or her research results arising under an MTA may require a separate license agreement from the materials provider. Non-federal funding terms and other MTAs for materials that will be used in research together may also create encumbrances on intellectual property.

We review each agreement for possible encumbrances and work closely with our researchers to and material providers to achieve acceptable intellectual property terms.

 

Publication Restrictions and Confidentiality Provisions

The university and its researchers must be able to publish the data and results that arise from research projects, even when proprietary materials that belong to other parties are involved. A researcher’s ability to publish may be negatively affected if stringent confidentiality or extensive publication restrictions are included in the MTA. Further, requiring a provider’s consent to publish may preclude the ability to publish altogether, which may undermine university data policies and overarching public policy to allow the public access to the results of publicly-funded research.

To ensure our researchers’ ability to publish and to allow the provider the opportunity to review intended public disclosures for the provider’s confidential information, we routinely agree to a reasonable (30 day, when possible) pre-publication review period.

Further, we review confidentiality language carefully to prevent the inclusion of university data or results in the scope of the provider’s confidential information.

 

Governing Law, Arbitration, and Indemnification

Despite the flexibility we may have in negotiating business and other terms of an MTA, certain terms can become problematic if the other party is inflexible, because of the confines of the laws and policies under which we operate. These issues often arise when providers are inflexible with terms related to governing law (including venue), indemnification, and binding arbitration.

MTAs often include specific governing law references that apply to the contract’s interpretation or would apply in the event of a dispute. We are unable to agree to be bound by the laws of other states, commonwealths, or countries, but can remain silent as to the choice of law – a compromise that is often workable for material providers.

Additionally, we are unable to agree to binding arbitration requirements that may be included in an MTA. However, we can agree to other alternative dispute resolution processes.

Lastly, a material provider may ask that the university defend or hold them harmless, should legal claims or actions arise from the use of the material. Although Kentucky law does not permit the university to indemnify or hold harmless another party, we are often able to reach an acceptable final position for both sides.

Frequently Asked Questions (FAQs)

 

A material transfer agreement (MTA) is the contractual instrument used to define the terms and conditions for the exchange of materials. An MTA typically sets forth rights to use the materials and may allocate rights that result from their use. They often include terms related to publication of results, limitations on the use of the materials, and the intellectual property rights of the provider and the recipient in the results of the research in which the materials are used.

An MTA may be needed when required by the provider of material. Outgoing transfers of materials from University of Louisville laboratories may require MTAs if the materials are the subject of a research disclosure on file with the Office of Technology Transfer, have been licensed to a third party, or are of human origin, toxic or hazardous, or export controlled.

Send an email to OTT. Please include as much information as you have, including the name of the material, the intended provider or recipient, the provider or recipient’s contact information, and any draft agreements you may have received.

The Office of the Executive Vice President for Research and Innovation has several authorized signatories for signing MTAs, including particular Office of Technology Transfer team members.

A researcher may be asked to sign an acknowledgement of the MTA’s terms and conditions, but only university individuals who are authorized to sign these agreements on behalf of the university have the authority to bind the university to the MTA.

Some MTAs may be reviewed and signed the day they are requested. Others, especially those with private industry or true collaborators, may require additional time to negotiate. Potential problem terms, such as publication restrictions and intellectual property matters, are discussed in greater detail above.

Possibly. Permission may need to be requested from the provider first, or the provider may prefer to send the materials to the requestor directly. Please contact the Office of Technology Transfer at 502-852-2965 for additional information and to discuss your request.

Yes. In order to transfer human tissues, the consent form used to gather those tissues must allow for the transfer of such tissue. EVPRI team members in the University of Louisville Human Subjects Protection Program Office (HSPPO) support two duly established and independent Institutional Review Boards (IRBs), which review and approve protocols for all research involving human participants. In the event the consent form does not provide for the transfer of tissues collected, HSPPO can assist in exploring alternatives.

In addition to IRB review and approval, the University of Louisville Privacy Office will be consulted regarding any data that may be transferred with the tissues. The tissues may be transferred with no protected health information (PHI) identifying information, or special language may be included in the MTA to allow for PHI to be transferred. A Data Use Agreement may also be negotiated, in order to allow a limited data set to be transferred. Lastly, the authorization obtained prior to collection may provide the ability to transfer. The Privacy Office can assist you in this determination.

For the transfer of materials that are toxic or otherwise classified has hazardous, please contact the University of Louisville Department of Environmental Health and Safety. Authorization from the Biological Safety Office will need to be obtained before an MTA transferring such material can be completed.

For the transfer of materials that may be export controlled, please contact the University of Louisville Office of Export and Secure Research Compliance (OESRC). Authorization from the Director of the OESRC will need to be obtained before an MTA transferring such material can be completed.