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Frequently Asked Questions
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- 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 a 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 Proposal Approval Form (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 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 form seeks important information that assists ORS and OUC in determining whether certain contractual terms need to be modified or removed to best protect the University’s and the Investigator’s rights and minimize the University’s and the Investigator’s liabilities. ORS and OUC cannot evaluate the seriousness or the likelihood of potential liabilities and obligations for the University and Investigator without knowing something about the material being transferred and how it is to be used. 4. Why does it take so long
to get an MTA processed through ORS or OTM?
Unless the provider or recipient desires to use the UBMTA, each MTA contains unique terms and need to be negotiated separately on a case-by-case basis. Negotiation time is often dependent on the workload and available response time by each party as each party likely has hundreds of pending contracts in review at any given time. It is not atypical for MTAs from industry providers to contain restrictions on disclosure of the research data and results and usage of the material, as well as ownership of all research data and results and any inventions or discoveries which are contradictory to University policy and mission. Therefore, each MTA is reviewed separately and negotiations on language occur and will take time.
5. Why does the OTM have to
review my outgoing MTA?
They do not if no intellectual property rights are involved. If there 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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