Introduction

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).

The terms and conditions of an MTA for receipt of material from an outside source are generally defined by three parameters:

•  the organizational characteristics of the material provider;
•  the actual or potential value of the material to the provider; and
•  the source of funding that will support the work with the material

Material Incoming from an Educational or Non-Profit Organization

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 to facilitate the exchange of research material for non-commercial purposes. If the parties agree, a short form ("Implementing Letter") can be used to confirm that the recipient has signed the UBMTA and is accepting material under UBMTA terms and conditions.

UW-Madison is a signatory to the UBMTA; therefore the Implementing Letter is the preferred instrument to use when we receive material from a non-commercial entity.

If a transfer is to be made under the terms of the UBMTA, the material provider may want to generate the necessary forms and send them to you for processing. If not, you can:

1. download the UBMTA Implementing Letter;
2. fill out the required information;
3. sign as recipient investigator; and
4. forward the Implementing Letter with an Extramural Support Transmittal Form (“T-Form”) to RSP through your chair and dean.

After the material provider signs and returns a copy of the document, RSP will send you a fully executed copy of the MTA through campus mail.

If a non-profit material provider declines to use the Implementing Letter, it may still be possible to use a Simple Letter Agreement, a short, straightforward document which incorporates the essential terms of the UBMTA.

Occasionally, a non-profit material provider will not accept UBMTA terms and conditions. In these cases negotiations proceed along the same lines as described in the next section ("Material Incoming from a For-Profit Entity").

Material Incoming from a For-Profit Entity

Most for-profit material providers have their own MTA templates, which they offer to UW-Madison as a starting point for negotiations. Finalizing terms with a for-profit material provider can be a complex and time-consuming process, particularly if the provider wants to protect the material (and associated confidential information) from further disclosure or wants to secure rights to inventions that may result from our use of its material. In transactions with for-profit entities, UW-Madison's approach to intellectual property issues depends in large part on the source of funding that will support our planned research with the material.

If our work with a provider's material will be supported by a federal grant, contract or cooperative agreement, we are required to follow the provisions of the Bayh-Dole Act (35 U.S.C. secs. 200-212), and its associated regulations (37 C.F.R. Part 401). Under Bayh-Dole, UW-Madison must either elect title to inventions that arise from research activities supported in whole or in part by federal funds, or convey title to those inventions back to the federal funding agency. UW-Madison may not assign title to such inventions to any party other than its designated patent agent (WARF) without the funding agency’s permission. Bayh-Dole also requires UW-Madison to:

•  provide the federal government with a non-exclusive, royalty free license to practice the invention;
•  share royalties with the inventor(s); and
•  use the remaining proceeds to fund further research.

If a PI's work with material from an outside source is federally funded, it is the position of UW-Madison and WARF that a for-profit material provider can receive a ninety-day option to secure a non-exclusive, royalty bearing license to inventions that directly result from the PI's work with the provider's material. Any arrangement more beneficial to the material provider can be accepted by RSP only after WARF is included in the negotiations. At a minimum, the university and WARF must be able to recover any costs that would be associated with meeting their obligations under an MTA (for example, the costs of obtaining a patent in order to grant rights to the material provider).

If the work will be supported by a private (i.e., non-federal) funding source, UW-Madison may be willing to accept intellectual property provisions that are more advantageous to the material provider, up to and including the transfer of title to inventions. In such cases:

•  in some schools/colleges, a campus negotiator may have a role, along with WARF, in arranging the disposition of inventions; and
•  UW-Madison will attempt to protect the PI’s ability to conduct future research by seeking to avoid an overly broad grant of patent rights to the material provider.

Negotiations with for-profit material providers are sometimes also complicated by confidentiality provisions, liability provisions and insurance requirements, or requests for publication delays that exceed thirty, or even ninety days. These matters are seldom an issue in our transactions with educational and non-profit organizations.

To secure material from a for-profit entity:

1. obtain the provider's form(s);
2. fill in the required information;
3. sign as recipient investigator;
4. forward the form(s) with a T-Form to RSP through your chair and dean.

Once the agreement is finalized, you'll receive a copy back through campus mail.

Material Incoming from the U.S. Government

Some materials can be procured from federal agencies such as the National Institutes of Health (NIH). Material transfer agreements from agency providers usually have terms that are consistent with the UBMTA, and are therefore acceptable to UW-Madison.

Outgoing Material Transfers

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 you'll need to follow WARF's guidelines for material transfers. You can learn more about the process at the WARF website.

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. In such cases the researcher may wish to use the UBMTA Implementing Letter or a Simple Letter Agreement, which incorporates terms consistent with the UBMTA. The researcher is encouraged to use one of these template agreements but, absent WARF ownership or other limitations on distribution, UW-Madison does not require a researcher to secure a recipient’s signature on any written agreement prior to sharing his or her material with outside parties.

In order to facilitate an outgoing material transfer, RSP can sign either the Implementing Letter or the Simple Letter Agreement on behalf of the Board of Regents. RSP does not, however, have the personnel resources to review, negotiate or sign other forms of MTAs for outgoing material transfers.