CDA’s and MTA’s are often the first step in maintaining IP rights and ensuring that your research results are not misappropriated by others.
Tag Archives: MTA
Who signs MTA’s?
TCO. The only people at OSU authorized to sign these documents are the Vice President for Technology Commercialization and the Director of the Technology Commercialization and Knowledge Transfer office.
When is the best time to call TCO?
- The earlier the better… Even if you are not sure that you have an invention, please give us a call. We can help figure it out.
- The moment you learn that an MTA or CDA is needed…
- At the point of submitting a manuscript or abstract…
- Before giving a seminar…
- Before a public disclosure…
When do I need an MTA?
- When you receive a request for Material from outside OSU.
- When you are obtaining Material from outside OSU.
- When you are bringing material to OSU from outside e.g. when you migrate to OSU from another institution.
- When you leave OSU to work at another institution and wish to take materials with you.
What should I tell researchers when they request materials from me?
You should tell them that an MTA will have to be completed before you can send the materials. They can contact TCO directly or you may send them to our web site for a copy of our MTA. Once we have all of the information that we need, we will strive to complete the paperwork as quickly as possible. Remember, MTA’s cannot be signed by faculty; only TCO can sign them.
What should I do if I signed an MTA that should be signed by OSU?
Call us! We will work with the other institution to get the correct contract in place.
What red flags should I look for regarding MTA’s?
- Provider includes new uses, improvements and derivatives in definition of Material.
- Provider wants to own research results, data.
- Provider wants automatic licensing rights or ownership in inventions, discoveries, improvements, etc. – Bayh-Dole Act.
- Provider (usually company) wants control of patent prosecution.
- Indemnification.
- Foreign law.
- Reporting requirements/ confidentiality issues.
- Publication restrictions.
What can slow down CDA’s or MTA’s?
- Incomplete information from the PI. Questionnaires are available on our web site for you to complete. The information will enable us to contact the right person on the other side and to make sure that the agreement language is appropriate for what you want to do.
- No contact information for “other side” provided.
- Unacceptable language – takes time for TCO to negotiate better language.
- Agreements often languish on companies’ desks.
What are Materials Transfer Agreements and what do they do?
Commonly referred to as MTA’s there are two basic types: outgoing (sending materials out of OSU) & incoming (receiving materials from another institution/company.
There is also what is known as the UBMTA (Universal Biological Materials Transfer Agreement). Many universities (including OSU) use these agreements to exchange biological research materials, but most companies will not use them.
MTA’s:
- Govern permitted use, restrictions, further distribution of Material.
- Define and protects the providing party’s Material.
- Sometime grant options/rights in resulting inventions, discoveries, improvements made with Material.
- Define and protect publication rights.
When do I need an MTA?
- When you receive a request for Material from outside OSU.
- When you are obtaining Material from outside OSU.
- When you are bringing material to OSU from outside e.g. when you migrate to OSU from another institution.
- When you leave OSU to work at another institution and wish to take materials with you.