Material Transfer Agreement in Practice

Top science is built upon transfer – transfer of thoughts, people and, last but not least, also the transfer of samples, material and data. MTA or “Material Transfer Agreement” is a type of contract regulating the transfer of research materials between a provider and a recipient, for the purpose of conducting the recipient’s research.

30 Jun 2020 Matěj Búřil

From the point of view of the Czech legislation, MTA represents a so-called “innominate” contract within the meaning of provision § 1746 paragraph 2 of Act No. 89/2012 Coll., Civil Code, as amended, which is not expressly stipulated by law. At Masaryk University, MTAs are generally taken care of by the Technology Transfer Office (TTO) which concluded 40 of these contracts in 2019. These can either be standalone agreements or they can be part of more complex contractual relationships within the framework of larger research cooperation agreements, consortial agreements etc. However, this article focuses on the basic forms of MTA and its key elements.

Subject Matter of the Contract
In the first place, the contract generally specifies the material as such and defines the core commitment of the provider to supply the material to the recipient and the recipient’s right to use the material under the conditions stipulated by the contract. The most common types of material are samples, biological material, chemical compounds, molecules, models, etc. It is always necessary to specify the material in an exact, distinctive manner, ideally including its quantitative and qualitative aspects (this can be specified in an annex to the contract). The Czech regulatory environment requires a material to be strictly tangible whereas the contract often explicitly excludes transfer of any intellectual property rights or personal data. However, in more complex cases when samples are transferred together with data, the parties may agree otherwise and include a license (right to use) to the intellectual property or allow sharing personal data (within the limits of the relevant legal regime).

Purpose Limitation
Another key part of MTA is the limitation of purpose for which the material is provided to the recipient (can be part of the annex as well). The purpose is agreed upon by the parties with regard to the scientific objectives, subject matter of the cooperation or a joint project of the relevant scientific institutions. However, there are other limitations to be considered as well, such as legal (e.g. restrictions regarding the handling of human tissue or tissue samples of endangered species of animals), technological (e.g. maintaining sample quality), financial (grant rules) and ethical limitations.

Intellectual Property Protection
Providing the material to the recipient does not change in any way the ownership rights thereto. The provider remains its sole owner. However, any results of the recipient’s research achieved while using said material (intellectual property) are a different matter entirely. In case the result of such research is an article or a publication, it is to be considered an original work protected by virtue of the mere fact of its creation (in such case the copyright belongs to the author/co-authors or their employer in case it is a work of an employee). In case the result of such research can be legally protected by a patent or a utility model, any rights of the provider to such intellectual property of the recipient depend solely on the express agreement of the contracting parties included in the MTA. These rights can range from an acknowledgement or affiliation regarding the source of material, sending the article or publication for a review, pre-approval, simply notifying the provider before publication or patent application, to a commitment to provide the licence to the results free of charge or, in case the result was achieved by joint research, co-authorship or co-ownership of the patent protection and subsequent utilisation of the result.

Concluding MTA
Besides the three key areas mentioned above, one has to keep in mind other important aspects of MTAs such as confidentiality and NDAs, transfer and shipping conditions regarding the material, financial aspects, compensation of the costs incurred by the provider, returning the material after the research is concluded or disposing of it, regular contractual provisions such as liability and guarantees, limiting compensation payments, stipulating the applicable law in case of an international element, effectiveness, duration and termination of the agreement. Unfortunately, the scope of this article does not allow an in-detail analysis of all aspects of MTA; however, should you need to consult any of these points, TTO is fully at your disposal. In conclusion, with regard to legal security and contractual relationships, MTA is an indispensable tool of technology transfer that you should always keep by your side because the absence of it can cause a lot of issues, friction, possible misunderstandings and, in a worstcase scenario, even legal disputes.

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