Common considerations for executing MTAs with companies
Ownership of intellectual property by the company
If an MTA states that the material provider will own any resulting intellectual property, investigators may be restricted in their ability to interact with a future sponsor, may have conflicts with obligations to current sponsors, may be prohibited from publishing and may be unable to use the research results in further research. While it is appropriate to allow the company to own certain inventions and results from the use of their materials, we may allow this only when doing so will not pose a barrier to publication and continuing research at the University.
Non-exclusive, royalty-free rights to use any inventions
While this provision seems reasonable, it implies that the University has or will obtain patent rights in order to convey this right. Patents can be very costly and the University typically recovers the cost of obtaining patent protection by licensing rights to use the patent to a company. If the company is under no obligation to pay any fees for use of the rights, the University could be forced to take on expenses it likely will not be able to recover. OTC is not able to accept this commercial risk and must negotiate terms that will allow the company to pay a share of patent costs should patents be required.
Companies may provide confidential information with the material and they may request that such information not be further disclosed. If the information is necessary for interpretation of the research results obtained using the material, that same information may also be required for publication of those results. The University cannot accept provisions that would prohibit an investigator from ever publishing the results of work using the company’s material.
Delay in publication
In order to protect potentially patentable inventions, companies often demand a review period for the investigator’s manuscripts, abstracts or hard-copies of presentation materials. This demand may jeopardize the timeliness of publication. If acceptable to researchers, OTC will allow a short delay to allow OTC and the company to review the publication and file a patent, if necessary.
Use of materials in sponsored research projects
Many industry MTAs contain language that prohibits the use of the material in research that is subject to licensing or consulting obligations to any third party, including the sponsor of the research project. Researchers will need to identify what funds will be used to support the project if no external funds, including NIH funds, may be used to support the project.
Definition of material
The industry provider may propose a definition of material that includes not only the original material, but also modifications or derivatives made from the material that incorporate the investigator’s original ideas or concepts. If the provider also claimed ownership of the modified material, the provider could own the results of the investigator’s research. The investigator could be prevented from using research results in further research, transferring them to other organizations, meeting obligations to research sponsors, or ensuring that the results are made public.
Conflicts with existing agreements
Industry MTAs may contain obligations that conflict with obligations in a preexisting agreement. Also, the material may be used in conjunction with a separate material received under another MTA. These situations could result in granting two or more parties conflicting rights to the same invention.