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Note:
The MTA Team has a new location. Please see CONTACT INFORMATION below for details.
Material Transfer Agreements (MTA's)
Material transfer agreements can be misunderstood or considered an annoyance, say officials... Buffalo Case Highlights MTAs [read more] The Scientist
Definition || MTA Request Forms || MTA Contacts || MTA FAQ's || UC MTA Language || Resources
DEFINITION
A Material Transfer Agreement (MTA) is a written agreement entered into by a provider and a
recipient of research material. The purpose of the MTA is to protect the intellectual and other property rights of the provider while permitting research with the material to proceed. There are three forms of material transfer that commonly arise at academic institutions, each calling for different terms and conditions.
1) Material Transfer Between Academic Institutions
(When academic researchers receive requests from colleagues for samples of research materials.) Agency sponsors (primarily NIH) often require that research materials generated from funded research are made available to other researchers. To comply with federal sponsors' desire for easy access to research materials, the Uniform Biological Material Transfer Agreement (UBMTA) was developed. The UBMTA provides a record of the material transfer, and prohibits the recipient from transferring the material to others without the written consent of the material provider.
If the academic institution receiving UCLA materials is on the list of signatories to the UBMTA located at http://www.autm.net/aboutTT/aboutTT_umbtaSigs.cfm, please use this UBMTA form to transfer UCLA research material to another academic institution. No signature from a UC official is necessary in this case. PLEASE FORWARD A COPY OF YOUR UBMTA WHEN FULLY-EXECUTED TO UCLA'S OFFICE OF INTELLECTUAL PROPERTY ADMINISTRATION -- ATT: MTA TEAM (fax 310-794-1497). If the academic institution is not on the list of signatories to the UBMTA, please contact one of the MTA team members who will assist in preparing an MTA for the transfer of your materials to another academic institution.
2) Material Transfer from Industry to UCLA
(When a researcher at UCLA requires materials from a company.)
Academic researchers may seek industrial materials for their research, which will
always be accompanied by an MTA. Because industry frequently has substantial investments and revenues at stake, an industrial MTA is usually more restrictive than a UBMTA.
MTA's from industry often contain restrictive language in the areas of publication, patent rights, and licensing. Often, companies want the right to block or edit our right to publish, which contradicts the concept of academic freedom.
In the area of patents, the company often wishes to own all rights - title and interest - to inventions arising from the use of the material; a position not acceptable to the University.
In the area of licensing, companies may ask for a royalty-free, exclusive or non-exclusive, license to our future patent rights giving us no incentive to file any patents on the work done with their material.
In short, many of these agreements contain language that must be negotiated!
Please see, Approved University of California MTA Language, for an idea of what is considered approvable for an MTA.
3) Material Transfer from UCLA to Industry
(When companies request a research material from UCLA.)
Companies often request samples of research material. These requests are handled in a few different ways:
i. If the material is not patentable, i.e., the composition is publicly known, a UBMTA designed for transferring materials from Academia to Industry should be used. For this type of material transfer, USE THIS AGREEMENT.
ii. If the material is currently patented by UCLA and not yet licensed to industry, a company may obtain a sample of the material under the following agreement, which must be signed by an authorized official within the Office of Research Administration. For this type of material transfer, USE THIS AGREEMENT. This agreement also allows a company to evaluate their interest in licensing the technology related to the material.
iii. If the material is not yet patented (or, publicly disclosed) and of possible commercial value, a material transfer agreement with secrecy provisions may be required. In these instances, the researcher may need to fill out an invention disclosure form on the subject material. These types of material transfers will be handled on a case-by-case basis.
MTA REQUEST FORMS
Each Material Transfer Agreement (MTA) submitted to the UCLA Office of Intellectual Property requires an MTA Request Form. The information provided in the Request Form helps expedite the negotiation and completion of your MTA. Please add your responses directly into the form, or print out and complete a hard copy version. Once completed, please submit the form to the MTA Team by fax (310-794-1497) or email to the MTA contacts below.
Incoming Materials - MS Word
Outgoing Materials - MS Word
CONTACT INFORMATION (new location!)
Chris Tomera
Material Transfer Analyst
EM: ctomera@research.ucla.edu
PH: 310/794-0046
Mougeh Mozafarian, J.D., M.A.
Sr. Material Transfer Analyst
EM: mmozafarian@research.ucla.edu
PH: 310/794-3671
Kathy Wrobel
Material Transfer and Industry Contract Officer
EM: kwrobel@research.ucla.edu
PH: 310/794-0401
Rae Anne Robinett
Material Transfer Specialist
EM: rrobinett@research.ucla.edu
PH: 310/794-3670
FAX: 310/794-1497
US and courier mailing address:
Material Transfer (MTA) Team/UCLA Office of Intellectual Property
11000 Kinross Avenue, Suite 280
Los Angeles, California 90095-1406
Campus Mailing address:
Material Transfer (MTA) Team/UCLA Office of Intellectual Property
280 Kinross Building
Mail Code: 140607
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FREQUENTLY ASKED QUESTIONS
Who is Authorized to Sign an MTA?
Frequently, investigators are required to co-sign the MTA as evidence that they have read it and will
comply with its terms. However, since the MTA is a contract, the official signature can only come from
those at UCLA who are charged with the task of reviewing them, and who have been delegated authority to
bind the Regents of the University of California contractually.
This authority resides in the Office of Research Administration (ORA) at UCLA, which is also the office of record [original documents are on record at ORA].
How Many MTA's are Received by OIP ?
(1995/6 - PRESENT)
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MTA STATISTICS |
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FY |
Count |
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1995/6 | 161 | |
1996/7 | 181 | |
1997/8 | 201 | |
07/98 - 04/30/99 | 242 |
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05/01/99 - 08/31/00 | 363 |
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09/01/00 - 12/31/01 | 401 |
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01/01/02 - 06/30/03 | 562 |
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07/01/03 - 06/30/04 | 516 |
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07/01/04 - 06/30/05 | 657
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07/01/05 - 06/30/06 | 663
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07/01/06 - 06/30/07 | 762
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APPROVED UNIVERSITY OF CALIFORNIA MTA LANGUAGE
CONFIDENTIALITY CLAUSE
"During the course of this Agreement, Company/Institution may provide
University with certain information or material, including oral disclosure
of information which will be reduced to writing within thirty (30) days,
which Company/Institution has marked as "Confidential." Except as required
by law, University will receive and hold such information in confidence and
agrees to use reasonable effort to prevent its disclosure to third parties.
This obligation will continue in effect for three (3) years after expiration
or termination of the Agreement.
University shall not consider information disclosed to it by
Company/Institution as confidential which: (1) is now public knowledge or
subsequently becomes such through no breach of this Agreement; (2) is
rightfully in University's possession prior to Company/Institution's
disclosure as shown by written records: (3) is rightfully disclosed to
University by a third party without obligation of confidentiality; or (4) is
independently developed by or for University without benefit of confidential
information received from Company/Institution."
PUBLICATION CLAUSE
"University will submit to Company all proposed publications, papers, and
any other written disclosure of data or information resulting from the
research project, at least thirty (30) days prior to submission for
publication, for the purpose of Company's identification of information
subject to the University's obligation of confidentiality hereunder. Company
will immediately notify the University in writing of such information and
the University will delete such information before submission for
publication."
PATENT/LICENSE CLAUSE
"Inventorship of developments or discoveries first conceived and actually
reduced to practice under this Agreement ("Subject Inventions") will be
determined in accordance with U.S. Patent Law. All rights to Subject
Inventions made solely by employees of University will belong solely to
University. All rights to Subject Inventions made solely by employees of
Company/Institution will belong solely to Company/Institution. All rights
to Subject Inventions made jointly by employees of University and employees
of Company/Institution will belong jointly to University and
Company/Institution. Company/Institution will be granted a time-limited
first right to negotiate an option or license under University's rights in
any Subject Invention that belongs either solely to University or jointly to
University and Sponsor.
University will promptly disclose to Company/Institution any Subject
Inventions. Company/Institution will hold such disclosure on a confidential
basis and will not disclose the information to any third party without
consent of University. Company/Institution will advise the University in
writing within sixty (60) days of such disclosure to Company/Institution
whether or not it wishes to secure an option or commercial license
("Election Period"). Company/Institution will have ninety (90) days from the
date of election to conclude an option or license agreement with University
("Negotiation Period"). Said license will contain reasonable terms, will
require diligent performance by Company/Institution for the timely
commercial development and early marketing of Subject Inventions, and
include Company/Institution's obligation to reimburse University's patent
costs for all Subject Inventions subject to the license. In the event it is
necessary in the opinion of University to file any patent applications to
protect a Subject Invention during the Election or Negotiation Periods,
Company/Institution will reimburse patent costs incurred by University
during such period. If such option or license is not concluded within the
Negotiation Period, neither party will have any further obligations to the
other with respect to such Subject Invention. If Company/Institution elects
not to secure such option or license, rights to such Subject Invention will
be disposed of in accordance with University's policies, with no further
obligation to Company/Institution with respect to such Subject Invention."
INDEMNIFICATION CLAUSE
"The University will indemnify, defend and hold harmless the Company, its
directors, officers, agents, and employees from and against any and all
liability, loss, expense (including reasonable attorney's fees), or claims
for injury or damages arising out of the performance of this Agreement, but
only in proportion to and to the extent such liability, loss, expense,
attorney's fees, or claims for injury or damages are caused by or result
from the negligent or intentional acts or omissions of the University, its
trustees, officers, agents or employees."
RESOURCES
UC Patent Policy:
The following information, presented in questions and answers
format, has been developed by the Council on
Governmental Relations (COGR), for the benefit of university faculty
and administrators across the nation.
http://www.ucop.edu/ott/patentpolicy/patentpo.html
Materials Transfer In Academia:
http://www.ucop.edu/ott/overacad.html
Principles and Guidelines for Recipients of NIH Research of NIH Research Grants and Contracts on Obtaining and Disseminating Biomedical Research Resources: Final Notice
Review the NIH Guidelines for Material Transfer Agreements
Report of the National Institutes of Health (NIH) Working Group on
Research Tools
Presented to the Advisory Committee to the Director
June 4, 1998
http://www.nih.gov./news/researchtools/index.htm
COGR -- The Bayh-Dole Act: A Guide to the Laws and Implementing Regulations (pdf)
http://www.cogr.edu/docs/Bayh_Dole.pdf
The Bayh-Dole Act
http://www.ucop.edu/ott/bayh.html
Office of Contract & Grant Administration
http://www.research.ucla.edu/ocga
Office of Intellectual Property
http://www.research.ucla.edu/oipa
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