Material Transfer Agreement
The model Material Transfer Agreement is provided by ERA-PG as produced by the IPR Workgroup of ERA-PG, the membership of which is composed of lawyers and technology transfer specialists of the Partners of ERA-PG.
I. For whom is this model MTA
The model Material Transfer Agreement of ERA-PG has been designed to enable the exchange of material between a participant of an ERA-PG project and a third party, being either a participant of another ERA-PG project or someone not involved at all in ERA-PG projects.
Please note that the exchange of material between participants of a same ERA-PG project is already addressed in the model Consortium Agreement for Collaborative Research Projects of ERA-PG (a model MTA between members of the same research consortium is present under Annex 4).
II. Purpose of this MTA
The purpose of this MTA is to address the exchange of material between two parties, and to allow this exchange to be executed under good and fair conditions and in the knowledge that good practice has been applied.
The discussion held within the IPR workgroup showed that many MTA were going far beyond their purpose and that it was necessary to agree on good practice regarding the content of an MTA.
Notably, it seemed critical that the MTA should retain its primary purpose and be utilised for the exchange of material and should not imply a collaborative research project. Therefore the rights given to the party providing the material have been minimised, cases where the rights of the Provider need to be more substantial should be addressed via a research contract and not an MTA.
III. How to complete this MTA
Once the name of the providing and receiving laboratories have been completed, together with the names of the persons authorised to sign the agreement, you will only need to chose whether to include the options outlined (A) and complete the annexes (B).
A) First step: complete details and chose the options
You will notice that there are three Articles that you can decide to include or not, taking into account the nature of the material transferred, and one Article to complete if necessary:
- Article 3.1: the phrase referring to Annex 1 §3 needs to be deleted if the Annex 1 is left open;
- Article 4.3: this clause regarding the review of publication only has to be used if the material has high added value or if special information is associated with it. If the material does not have any added value (e.g. the material is mass-produced and is transferred only for the recipient to save time and avoid wasting public money) then such clause should not be used;
- Article 4.4: this article can be added if you want to emphasise that any patent including the material needs the prior authorisation of the Provider of the material and that it can lead to co-ownership. Again, this article should only be included if your material has some added value;
- Article 6: you have to determine the duration of the MTA. The options are to set out in Annex 2 and either the duration of the Research will determine the duration of the MTA agreement, or without this detail in Annex 2 you can allow the Material to be used in any of the Recipients’ research, and in this case you can specify the duration of this MTA, and therefore the availability of the Material to the Recipient.
B) Second step: fill the annexes
Three annexes need to be completed in order to execute this MTA.
- Annex 1: the description of the Material is detailed under six points, which need to be completed properly;
- Annex 2: the research for which the Material will be used need either to be detailed in this annex by following the six points proposed – or if you do not wish to limit the use of the Material for a specific research, only the proposed sentence “any research performed by the Recipient” needs to be included and the remainder can be deleted;
- Annex 3: shipment costs need to be completed (if not, then specify the cost as “0”). The proposed principle is that the price of delivery will be paid by the Recipient on the basis of the costs mentioned in this annex, but if duty charges are to be charged in the country of delivery, it will have to be paid by the Recipient directly to the concerned administration (e.g. Customs).
IV. How to execute this MTA
Once the content of the MTA is agreed by the parties, two original copies need to be signed – please note that if there are more than two parties, then the MTA and number of copies will need to be modified to reflect this.
Once the MTA signed, the Provider will need to send an invoice for the costs (if applicable) and send the Material within 15 days (article 2.3). However, the Provider may withhold sending the Material until payment is received (if applicable).
The Recipient is authorised to use the Material only for the Research and not for any other purposes (such as commercialisation). The term “Research” is defined by the content of Annex 2 (article 1.2).
The Recipient agrees not to transfer, release, sell or distribute the Material to anyone other than their personnel involved in the Research.
The Recipient agrees to keep confidential all non public information related to the Material, which include notably the ones described under Annex 1 §3. This obligation of confidentiality lasts for the duration of the agreement plus an agreed period to be completed (usually 5 to 10 years).
The agreement will last for the duration indicated in article 6.
The rights of the Provider are detailed under article 4 are:
- Right of acknowledgement in publications;
- Non exclusive and royalty free access rights for internal, in-house research on the results obtained with the Material and which would not have been obtained without the specific and determinative use of this Material
- Optionally, right to review the publication
- Optionally, if a result patented by the Recipient includes the Material, a further agreement will need to be negotiated prior to the submission of the patent application and co-ownership may be requested (this clause serves as a reminder that the Material is the owned by the Provider and the MTA only provides a licence for research)
The applicable law and jurisdictions of the agreement (article 8) is the one of the Provider.
V. Final Word
We would like to emphasise the fact that a MTA covers an exchange of material only. That means that the only action for the Provider of the material is to provide it, not more, as the Provider does not participate in the research which is made with their material. Therefore the rights of the Provider have been minimised – otherwise this would be classed as free research which is not acceptable in a “Material Transfer Agreement”.
Therefore if your level of collaboration is greater than a simple transfer of material, for example, a technique associated with the material is also transferred we would recommend the negotiation of a research contract or a licence agreement depending on the nature and the state of achievement of your material/technology.
Download
 | MTA ERA-PG funded projects (final 20080818IPRWorkgroup).doc | 117 KB |