Materials Transfer Agreements
A material transfer agreement (MTA), signed by the Office of Research and Sponsored Programs on behalf of the Board of Regents of the University of Wisconsin, must always be in place before a principal investigator (PI) at the University of Wisconsin-Madison receives material from an outside source. When a PI sends material off campus, an MTA is recommended but not required unless the material is managed by the Wisconsin Alumni Research Foundation (WARF).
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What is a Material Transfer Agreement?
A Material Transfer Agreement (MTA) is a written contract between a provider and a recipient of research material. The purpose of the MTA is to define the rights of the provider and recipient with respect to the intellectual property (actual and potential), liability, confidentiality of provider information, publication of recipient research results, and other associated legal formalities that the provider and recipient may wish to cover in the transaction.
Biological materials, such as reagents, cell lines, plasmids, and vectors, are the most frequently transferred materials, but MTAs may also be used for other types of materials, such as chemical compounds, equipment, and even some types of software. Often these materials are a necessary component of a research project and are prohibitively expensive or wholly unavailable on the commercial open market; in some cases the only source may be a for-profit entity that is still conducting its own research on the materials. Chances are good that in such circumstances the industrial provider will consider its materials to be vitally important proprietary resources. Consequently, it may want to assert intellectual property rights to inventions made by the recipient with those materials, or restrict publication of results obtained in research that utilizes them. Universities must ensure that MTA terms permit full dissemination of research results, and do not conflict with other University policies, including those related to intellectual property.
What are the PI's obligations in relation to material transfer agreements?
A principal investigator (PI) must be sure that a material transfer agreement (MTA), signed by the Office of Research and Sponsored Programs on behalf of the Board of Regents of the University of Wisconsin, is in place before he/she receives material from an outside source
Researchers must carefully examine all commitments made in an MTA in light of past and future obligations relating to funding. If materials received from one entity and covered by an MTA are to be used in research funded by any other entity, access rights to inventions given to the parties must not conflict. If materials are combined from multiple providers, conflicts in access rights must similarly be avoided.
The University assumes that a researcher who submits an MTA has read and agrees with all of its terms. The University will assess the MTA terms, and work with the provider to modify them as required to insure that they are consistent with federal law relating to inventions or other state laws or University policy, and are in the best interests of the University and the researcher.
Before transferring materials that are part of a pending or issued WARF patent, or assigned to WARF as a "biological material" researchers must contact WARF to be sure the necessary agreements are in place.
How are Material Transfer Agreements processed?
See UW Research and Sponsored Programs "The Principal Investigators' Guide to Material Transfer Agreements" on the RSP website for a comprehensive explanation of the processing of material transfer agreements at the UW-Madison.
A material transfer agreement (MTA), signed by the Office of Research and Sponsored Programs on behalf of the Board of Regents of the University of Wisconsin, must always be in place before a principal investigator (PI) at the University of Wisconsin-Madison receives material from an outside source. When a PI sends material off campus, an MTA is recommended but not required unless the material is managed by the Wisconsin Alumni Research Foundation (WARF).
Your Dean's Office can assist you with material transfer agreements.
Incoming MTAs
The University requires that a signed material transfer agreement (MTA) be in place before researchers receive biological or other research materials. These MTAs typically restrict the use to which the materials may be put and prohibit redistribution of the materials to other researchers. MTAs for materials being furnished to the University are similar in effect to industrial research funding agreements and are processed by the University in the same way, using an Extramural Support Transmittal Form.
If the material provider is a for-profit entity, and considers the requested material to be central to its future business plans, it will aggressively seek to protect its rights to that material and associated intellectual property. It may seek ownership of University inventions that arise from research with its materials, or a royalty free license for the use of such inventions. Therefore, it is essential that the researcher carefully examine all commitments made in the MTA in light of past and future obligations relating to funding. If materials received from one entity and covered by an MTA are to be used in research funded by some other entity, intellectual property rights provided to the parties must not conflict. If materials are combined from multiple providers, conflicts in access rights must similarly be avoided.
If an invention covered by an MTA was supported with federal funding the provider may only receive such rights as are consistent with the University's obligations under federal law.
See UW Research and Sponsored Programs "The Principal Investigators' Guide to Material Transfer Agreements" on the RSP website for a comprehensive explanation of the processing of material transfer agreements at the UW-Madison.
Outgoing MTAs
When a UW-Madison researcher wants to share material with someone off campus, we call the transaction an "outgoing material transfer." The key factor in outgoing transfers is ownership of the underlying intellectual property. If the material to be transferred is part of a pending or issued WARF patent, or is assigned to WARF as a "biological material," then the UW-Madison material provider must follow WARF's guidelines for material transfers. You can learn more about this process at the WARF Web site.
If rights to the material are not assigned to WARF, and there are no other constraints on distribution, then a UW-Madison researcher is free to share his or her material with outside parties, including for-profit as well as educational or non-profit entities. Absent WARF ownership or other limitations on distribution, UW-Madison does not require a researcher to secure any written agreement prior to sharing material with outside parties; however, your Dean's office can advise you on the best approach.
See UW Research and Sponsored Programs "The Principal Investigators' Guide to Material Transfer Agreements" on the RSP website for a comprehensive explanation of the processing of material transfer agreements at the UW-Madison.
Uniform Biological Material Transfer Agreement
Educational and non-profit organizations are generally willing to transfer material under the terms of the Uniform Biological Material Transfer Agreement (UBMTA), which was developed on a collaborative basis by major research universities, the National Institutes of Health, and the Association of University Technology Managers (AUTM) to facilitate the exchange of research material for non-commercial purposes.
UW-Madison is a signatory to the UBMTA. Transfers between signatory institutions can be accomplished simply by signing a UBMTA "Implementing Letter" which states that the transfer will be made under the terms of the UBMTA. Alternatively, if the parties are not signatories to the UBMTA, a "Simple Letter Agreement", which incorporates key terms of the master agreement, can be used to effectuate the transfer.