Material Transfer Agreement Checklist

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Material Transfer Agreements are used to document the transfer of a drug or material from one entity to another--either to transfer a drug or material away from our laboratories or to receive a drug or material into our laboratories. We refer to these as "University Transferring" and "University Receiving," respectively.

Utilize one of the standard Material Transfer Agreements to document University Transfers. We generally do not recommend substantive alterations to these standards be accepted. On the other hand, most University Receiving Agreements involve editing the provider-submitted agreement. Use this Checklist to analyze provider agreements to conform them to the requirements of the Regents' Rules and Regulations regarding intellectual property.

As an FYI, The University of Texas System sister Institutions executed a Master Material Transfer Agreement, as between all fourteen sister Institutions, to streamline the transfer of materials between the sister Institutions.


1. Does the agreement retain the University's right to publish?

yes.

Good -- keep as is.

no.

The University must retain an unfettered right to publish. If the clause impairs this right in any way, edit it utilizing the Publications Clause Checklist.


2. Does the agreement grant the Material provider ownership of, or a royalty-free license in, University inventions resulting from the Investigator's use of the Material?

If the agreement you are reviewing grants the Material provider ownership of, or a royalty-free license in, University inventions resulting from the Investigator's use of the Material, answer the following questions about extenuating circumstances that may apply. If the Agreement does not grant such rights to the Material provider, skip the questions below and go to Question 6.


3. Referring to Question 2, is there another source for the Material?

Yes

You have indicated that there may be another source for the Material.  We should only agree to convey ownership of, or grant royalty-free license rights in, University intellectual property when there is no other source for the Material, the research facilitated by the Material transfer is very important to the individual research, and it comports well with the University’s research mission.  Your answers to the questions about extenuating circumstances indicate that the rights granted in this Agreement may be inappropriate, and you should modify the clause to give the Material provider an option to negotiate an exclusive license to any University inventions resulting from the Investigator’s use of the Material.  Edit the intellectual property rights clauses utilizing the Intellectual Property Rights Checklist.  If this is not acceptable to the Material provider, encourage the Investigator to pursue other sources for this Material.


4. Referring to Question 2, is there a likelihood of an invention?

Yes

If the Investigator and the University administrators are informed of the risk that any invention resulting from the research conducted with this Material will be owned by, or licensed to (royalty-free), the material provider and agree that, under the circumstances, they desire to obtain the Materials despite the risk, the University may agree to terms regarding ownership of or interests in intellectual property resulting from use of the Material that would normally be unacceptable.


5. Referring to Question 2, is the research important to the Investigator and does the research comport well with the University’s research mission?

Yes.

If the Investigator and the University administrators are informed of the risk that any invention resulting from the research conducted with this Material will be owned by, or licensed to (royalty-free), the Material provider and agree that, under the circumstances, they desire to obtain the Materials despite the risk, the University may agree to terms regarding ownership of or interests in intellectual property resulting from use of the Material that would normally be unacceptable.


6. Does the agreement require the University to indemnify the Material provider?

yes.

Modify the clause to limit the University's indemnification, to the extent authorized by the Constitution and laws of the State of Texas, and insert the word "negligent," as appropriate, to indicate that we can only indemnify against harms that result from our negligent use of the Material.

no.

Good -- Leave as is.