HSC Pre-Award Office
November 18, 2003
Material Transfer Agreements
Prepared by:
Robert Bienstock
RIPLS
Big MTA Issues
Intellectual Property
Confidentiality
Publication
Intellectual Property Rights:
Overview
Providers Want Resulting IP
Business decisions
Risks
UNM sharing in proceeds
Inconsistent obligations
Tax-exempt bond liabilities
IP Rights: Who benefits?
Business decisions
What IP or options to give back?
Limit to potential use of the material
Never for “anything created while using”
Provider can own progeny and Unmodified
Derivatives
Internal research use v. commercial use
Who decides?
IP Rights: Inconsistent
obligations
Business decisions
Inconsistent obligations
Other MTAs
Sponsored research agreements
Affiliations (E.g., MIND Institute, Cancer Care
Alliance)
Use by nonUNM employees
IP Rights: Bond Liabilities
Tax Exempt Bond Liabilities
If building built with tax exempt bonds
No more than 10% private business activity
Tracking the 10% is a huge challenge
PBA: below-market price
PBA: Can’t set price until invented
Unless you’d do it for everyone
Or else: bond becomes taxable retroactively
Confidentiality: Overview
Ability to comply
Loss of export control exemption
Sponsor obligations
Confidentiality: Can we Comply?
Ability to Comply
Researchers
Students (high risk)
Others in lab
Confidentiality as to what?
Their stuff?
Our results?
Who decides?
Confidentiality: Export Controls
Loss of export control exemption
For materials (if that’s what’s confidential)
For results (if that’s what confidential)
Check with Industrial Security if
Materials related to biowarfare/bioterrorism
Confidentiality of results
Confidentiality: Sponsors
Review any sponsorship agreement for
inconsistent obligations
Consider reporting and publication
obligations
Confidentiality: Publication
Rights
Confidentiality clauses can effectively
restrict publication
Publication Rights
Restrictions threaten
academic freedom
export control exemption
tax exempt bonds
sponsor agreement compliance
student academic credit