DEFINITION

A Material Transfer Agreement (MTA) is a written agreement entered into by a provider and a recipient of biological research material. The provider is the academic institution/company that owns the material. The recipient is the academic institution/company of the scientist that requests the biological research material. The purpose of the MTA is to define and protect the intellectual property and other property rights of the provider and recipient while permitting research with the biological material to proceed. Any biological materials coming into or going out of TJU should be accompanied by an MTA.

OWNERSHIP

TJU can not provide any research materials which TJU does not own.

Determining legal ownership of a proprietary or modified research material is often the issue which takes the most time to resolve when TJU is the provider. A full disclosure of any issues known by TJU researchers which could impact this determination will speed the issuance of a completed MTA.

If TJU researchers are requested to provide research materials, such research materials must be developed and generated at TJU researcher’s lab at TJU.

TJU does not own research materials that:

1. TJU researchers obtained from other researchers in industry or at academic institutions with or without an MTA.
2. Are generated by TJU researchers by repeating the experiments published in journals by other researchers in industry or at academic institutions.
3. TJU researchers developed and generated while they are employed by their previous employers before they joined TJU.

In short, TJU researchers do not own the research materials. Their employer (e.g., TJU) owns the research materials. Thus, for any research materials transferred from one entity to another, including when TJU researchers are joining TJU or leaving TJU, OTT should be contacted and MTAs should be established before any material transfer occurs.

PROVIDING OR RECEIVING THIRD-PARTY MATERIALS

1. TJU providing third-party materials:
   
   If TJU researchers are requested to provide material that is not owned by TJU, the Recipient needs to establish an MTA with the Owner of the requested material. Once the MTA between the Owner and Recipient is established, TJU, as the Provider, needs to establish a Simple Letter Agreement (SLA) with the Recipient to document the transfer of third-party-owned material.
   
   If the MTA between TJU and the Owner has terms that allow TJU to further distribute the Owner’s material, the Recipient does not need to establish an MTA with the Owner. Only an SLA between TJU and the Recipient will be established to document the transfer of third-party-owned material.

2. TJU receiving third-party materials:
   
   If TJU is the Recipient of material that is not owned by the Provider, TJU needs to establish an MTA with the Owner of the requested material. Once the MTA between TJU and the Owner is established, TJU needs to establish an SLA with the Provider to document the transfer of third-party-owned material.

MODIFICATIONS OF MATERIALS

If TJU researchers modify any research materials he/she obtained from industry or academic institutions (under MTAs) the resulting material is considered a Modification. The following is an example of making a Modification: a researcher obtains a plasmid (the original research material) from a colleague through an MTA. The researcher inserts a piece of cDNA into the plasmid, deletes some sequence of DNA in the plasmid, or generates mutated cell lines or mouse lines. These resulting materials are all considered Modifications. Such Modifications are jointly owned by TJU and the company/academic institution that provided the original research material (e.g., the plasmid). Without a written consent and/or license from the company/academic institution(s) that provided the original research material (e.g., the plasmid), TJU can not provide such Modifications to other academic institutions for research purposes as well as to any for-profit company.

TYPES OF MATERIAL TRANSFER

There are different types of material transfer that commonly arise at academic institutions, each calling for different terms and conditions. Please read carefully the conditions listed below and email a complete MTA Questionnaire for Material In or MTA Questionnaire for Material Out to OTT to initiate the MTA process. OTT WILL NOT proceed unless it receives a completed MTA Questionnaire from TJU researchers.

A fee might also be charged when TJU is the provider. OTT will consider the researcher’s suggested amount of the fee in the MTA Questionnaire. TJU researcher will receive 40% of such fee according to University’s Patent Policy.

1. Material Transfer Between TJU and Academic Institutions
   (When TJU researchers provide biological materials to or receive biological materials from academic researchers at other institutions.)
   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.
   1. If the provider or recipient academic institution is on the list of signatories to the UBMTA, OTT will use the UBMTA for such material transfer. The terms in the UBMTA have been agreed to by signatories and will thus expedite the MTA process.
   2. If the provider or recipient academic institution is not on the list of signatories to the UBMTA, OTT will contact the Technology Transfer office at that academic institution to either obtain an MTA template (when TJU is the receiver) for TJU’s review or to send a TJU template MTA (when TJU is the provider) for that academic institution’s review. Although the UBMTA is preferable, the terms in academic MTAs are generally acceptable. Some MTAs from foreign institutions may have unusual terms that need to be clarified.
2. Material Transfer from TJU to Industry
   (When companies request a research material from TJU.) Companies often request samples of research material for their evaluation prior to licensing the material. Please forward your request and the contact information of the company to OTT (such as by forwarding to OTT the email correspondences you have with the company). Please also inform OTT if the requested research materials are covered under any patent filed by OTT or are not yet patented/publicly disclosed but of possible commercial value. OTT will send out TJU template MTA for company’s review. Please do not send out TJU’s template MTA by yourself.
3. Material Transfer from Industry to TJU
   (When a researcher at TJU requires materials from a company.) Academic researchers may seek industry materials for their research, which will always be accompanied by an MTA from the company. Because industry frequently has substantial investments and revenues at stake, an industry MTA is usually more restrictive than a UBMTA or academic institution’s MTAs.

MTAs from industry often contain restrictive language in the areas of publication, patent rights, and licensing. Often, companies want the right to block or edit TJU’s 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 demand a royalty-free, exclusive or non-exclusive, license to our future patent rights giving us no incentive to file any patents on and preventing compensation to TJU and the TJU researcher for inventions or improvements arising from the use of their material.

In short, many of these agreements contain language that must be negotiated! This can be a very difficult, lengthy process if the company believes that providing the research material entitles it to broad rights regarding the research results.

MTA Process/Standard Operating Procedure

This signing authority resides with the Office of Technology Transfer at TJU.