In the world of scientific research and development, sharing materials between organizations is a common practice. However, when such sharing involves proprietary materials or intellectual property, it becomes important to have a legally binding agreement in place to ensure the materials are used only for their intended purpose and that the owner’s rights are protected. This is where a material transfer agreement (MTA) comes in.
MTAs
An MTA is a contract that governs the transfer of tangible research materials, such as biological materials, chemicals, or software, from one organization to another. The agreement outlines the transfer’s terms and conditions, and specifies the permitted uses of the materials. A legally binding document, the MTA protects the interests of both the provider and recipient of the materials.
Main Elements of MTAs
Identification of the parties involved
The agreement will identify the provider and recipient of the materials.
Description of the materials
The agreement will describe the transferred materials, including their quantity and any specific characteristics or properties.
Purpose of the transfer
The agreement will specify the intended use of the materials and any restrictions on their use.
Intellectual property rights
The agreement will address any ownership or intellectual property rights associated with the transferred materials, as well as any restrictions on the use of such rights.
Liability and indemnification
The agreement will address issues related to liability and indemnification, such as who is responsible for any damages or losses that may arise from the use of the materials.
Confidentiality
The agreement will include provisions to protect any confidential or proprietary information associated with the transferred materials.
Termination and return of materials
The agreement will specify the conditions under which one can terminate the transfer, as well as the procedures for returning any remaining materials to the provider.
It is important to note that an MTA is not a substitute for a license or research collaboration agreement. An MTA only governs the transfer of materials, while a license or research collaboration agreement covers broader intellectual property rights and may include provisions related to commercialization, royalties, and other financial considerations.
MTAs are an essential tool for the exchange of research materials between organizations. By defining the terms and conditions of the transfer, MTAs help ensure that the materials are used only for their intended purpose and that the rights of the owner are protected. Researchers should always ensure they have an MTA in place before sharing any proprietary materials, to avoid any legal disputes that may arise from such transfers.
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Barna Jaffe Lande’s IP team is at your disposal for any question related to the transfer, commercialization, and cooperation in intellectual property.
Adv. Ken Shaked is a partner in the firm’s Corporate Department.