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Frequently Asked Questions
- Does an MTA always have to be processed in this manner?
- Why does it have to be treated the same way as any other research
agreement?
- Why do a PAF and Disclosure of Intellectual Property and Publications
Rights in an MTA have to be completed for an incoming MTA?
- Why does it take so long to get an MTA processed through ORS or OTM?
- Why does the OTM have to review my outgoing MTA?
1. Does an MTA always have to be processed
in this manner?
Yes, a Material Transfer Agreement is a contract, which means it must be processed like any research contract. It receives the same scrutiny as a clinical trial or a standard research agreement.
2. Why does it have to be treated the same way
as any other research agreement?
Because a Material Transfer Agreement contains many of the same clauses, which are objectionable to UIC that are contained in other contracts such as: ownership of intellectual property and other intellectual property rights; publication rights; indemnification; governing law; et cetera.
3. Why do a PAF and Disclosure of Intellectual
Property and Publications Rights in an MTA have to be completed
for an incoming MTA?
A PAF is a transmittal document. It is the tool used by ORS to enter your MTA request into the database so that it can be tracked. These forms are only done on incoming MTA’s because those are the ones, which we have to track until all obligations are complete and the required archiving period expired. A rigorous archiving process permits UIC to quickly respond to any claims by the contracting entity or any audit. The Disclosure of Intellectual Property and Publication Rights in MTA form informs ORS on how best to negotiate your MTA. For example, if you indicate that you have no desire to publish, then this office would not insist on UIC’s right to publish, and if you indicate the Material can only be used for specific purposes, we will know to modify the agreements to permit only that use.
4. Why does it take so long
to get an MTA processed through ORS or OTM?
If the forms are complete and no negotiation is necessary, the process goes quickly because UIC has taken numerous steps over the years to streamline the processing of MTA’s, including adopting an easy-to-process simple letter agreement between educational institutions, where the Material is used for research purposes only. When the requestor does not complete the forms, or where negotiation is required, the process is lengthened by the response times of the parties, including the UIC investigator. For instance, some incoming MTA’s or changes to an outgoing MTA requested by another institution, include ownership of Material or other intellectual property rights language, non-disclosure or confidentiality language (which means you cannot publish), favorable publication clauses for the other side, requirement that royalties or paid or joint ownership is required of any product that results from use of the Material transferred, and many other issues. MTA’s with industry, for example, can be particularly complicated and require careful review to make sure the UIC investigator’s rights are not compromised by the transfer.
5. Why does the OTM have to
review my outgoing MTA?
They do not if no intellectual property rights are involved. If they are, this step preserves UIC’s rights in its inventions, and more importantly, preserves an investigator’s freedom to do research. For instance, when one distributes their cell line or other Material, which they have developed through the course of their research to another, this is considered a form of public disclosure if no confidentiality provisions are used, and patent rights and commercialization ability are lost. If the UIC scientist intends for the University to apply for a patent or license a related product to industry, then it is prudent for the OTM staff to review the terms under which the Material is to be transferred. In some cases the terms of the incoming MTAs restrict what the UIC investigator can do with the Material – the OTM helps to interpret these restrictions and negotiate an outcome that is acceptable to the inventor.
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