Material Transfer Agreements

Page Updated: August 20th, 2018

The exchange of materials among scientists is a common, and much needed, practice. Material Transfer Agreements (MTAs) are contracts that protect the rights of both the recipient and the provider of these materials. Whether the material is incoming or outgoing, and whether the party we are contracting with is a government agency, academic institution, non-profit organization, or industrial partner, contracts of this type are negotiated by the Contracts Team in RSP.

Notwithstanding the foregoing, when rights to outgoing materials have been assigned to the Wisconsin Alumni Research Foundation (WARF), the agreements covering transfers will be handled by WARF.

What is a Material Transfer Agreement?

An MTA is a written contract that defines the rights, obligations, and restrictions for both the provider and recipient with respect to the materials being exchanged. MTAs are not used for purchase of commercially available materials.

Why and When would you need or want an MTA?

At UW-Madison, there are situations when an MTA is required due to policy and other situations where, while not required, it is a good idea to have an MTA.  Since the purpose of an MTA is to protect the rights of both the provider and the recipient, even if an MTA is not required, it may be a good idea to have an MTA to protect the rights of the researcher(s).

  • For incoming materials, an MTA is not a requirement for UW-Madison.  However, some providers will not will not share their materials without having an MTA in place.  In these instances, the requirement is imposed by the provider and a WISPER record is always required for RSP to process the MTA.
    As stated earlier, while not required by UW, having an MTA in place might still be beneficial to the researcher. This comes up in cases where there’s a concern that the provider may object to the use of the material later, the provider requests reports on how the material was used, or if the researcher plans to share the material with colleagues. In each of these cases, an MTA is beneficial as it documents the obligations and use of the material. By documenting these items, the researcher may avoid unforeseen problems in the future.
  • Outgoing material transfers. UW’s “Policy on Tangible Research Property” requires an MTA to be in place for all transfers of materials outside of campus. But beyond the “Policy on Tangible Research Property,” it’s important to consider other aspects of having an MTA for sending the material. For example, the researcher may want a report on the outcome of the research, or the researcher may want to prohibit the recipient of the material from modifying or redistributing the material. In developing an outgoing MTA, it’s important to think about restrictions that may be placed on the recipient’s use of the material. Providing this information to RSP can then help shape the agreement so that the researcher’s interests are protected in the future.

Recent Changes to Processing MTAs

RSP, working with other campus groups, has established a goal of defining a new process to expedite the processing of these template MTAs. Adopting these new processes for MTAs should positively affect the processing times of MTAs. By signing the template agreements quickly, the material should arrive to the lab sooner. Additionally, efforts will be redirected away from reviewing template agreements and devoted toward reviewing more complicated agreements.

This document outlines the new process and provides information about the need to shorten the time for negotiations of MTAs.

Important MTA Considerations

Below are some items to keep in mind when receiving material or sending material to others:

Incoming Material Transfer Agreements
  • Whether the materials will be used on a project that has funding terms and conditions.
    • Many MTAs restrict use of the materials to internal research or non-commercial purposes. Please consider the terms and conditions of any existing projects you have that will coincide with your use of the material(s) since the agreements for these projects may provide deliverables or grant access to resulting intellectual property to the project sponsor. The provision of the deliverables or intellectual property may conflict with the terms of the MTA.
  • Whether the materials will be used with other materials subject to restrictions or legal obligations to the third-party provider (e.g. other materials purchased subject to terms and conditions or obtained under a license or another MTA).
    • This relates to the internal research/non-commercial use limitation. If we intend to use the requested materials in conjunction with third-party materials, those third-party materials may have been obtained subject to an MTA (or other terms and conditions) that requires us to provide deliverables or access to resulting intellectual property to that third party. These provisions would then conflict with the terms of the material being requested.
  • Whether you expect to share the materials with collaborators (internal or external to UW) or otherwise further distributed.
    • MTAs often include restrictions on how and to whom materials (and often modifications) can be shared. For example, some state that the materials may not be shared outside of the recipient scientist’s lab and prohibit any further distribution of the original material, and some state that we can only further distribute modifications under terms substantially the same as the terms under which we obtained the materials. If there’s a plan to share now or in the future, we should address that need upfront to speed up the process later.

Please keep these consideration in mind as you are pursuing the receipt of materials. If these considerations for incoming materials raise concerns for you, please discuss with RSP prior to signature of the agreement. RSP can negotiate incoming material transfer agreements based on discussions with you. After an In-MTA has been executed, it is the responsibility of the PI to abide by the terms and conditions of the agreement.

Outgoing Material Transfer Agreements
  • Whether the materials were assigned to WARF.
    • If materials have been assigned to WARF, UW does not have the legal right to distribute them without WARF’s consent, and often WARF will need to negotiate a license with the requestor first. Please contact your WARF Licensing Manager to discuss the sharing of these materials.
  • Whether the materials were obtained from a third party, or contain or incorporate materials obtained from a third party.
    • The agreement under which we obtained the materials my prevent us from further distributing them, or may impose specific terms on how and to whom we may further distribute the materials or modifications of the materials. If this is the case, we need to see if there’s any ability for us to share the materials.
  • Whether the materials were created subject to a fee for service or research agreement.
    • If the materials are considered deliverables under a service agreement or results under a research agreement, we likely have already granted rights to such materials to the sponsor of that original project and may not have the legal right to further distribute the materials to third parties. If this is the case, we need to see if there’s any ability for us to share the materials.
  • If applicable, whether we received verification from IRB that sharing of the materials is allowed under the applicable protocol/consent forms.
    • This only pertains to materials that were derived from human subjects by UW. Prior to distribution of materials, subjects must have been informed of the intent to share their materials and must have given their consent to such sharing.

Expediting Incoming MTAs

Knowing that timing is crucial to conduct experiments, RSP and the OVCRGE have implemented a process to expedite certain template MTAs. This process recognizes that the researchers have first-hand knowledge about the work they are doing and the materials in their labs.

As part of this process to expedite agreements, for Incoming MTAs, if the agreement is an unmodified version of the one of the agreement templates listed below, or if the agreement is a template universally accepted at UW-Madison, such as an Addgene Order, RSP will sign the agreement without further discussion and return the signed agreement to the provider.

We ask that researchers please review the MTA agreement in conjunction with existing obligations and the Important MTA Considerations listed above. If there are any questions regarding the Considerations or the MTA terms themselves, please contact RSP at contracts@rsp.wisc.edu.

Outgoing MTA Process

Outgoing MTAs require UW-Madison to be a bit more careful because there are many interests involved. From WARF to the providers of the material to the funders of the research, there are many interests that pull on UW-Madison. To help UW-Madison evaluate the interests that may be involved in the material, UW-Madison has developed the Outgoing MTA Checklist through conversations between RSP, the OVCRGE and the Office of Legal Affairs. This checklist should be completed and attached to the WISPER record of all Outgoing MTAs at the time the record is created. With this checklist completed, RSP can help direct which template agreement to use for the specific material, notify other campus constituents that may need to weigh in on the material transfer, and ensure that UW-Madison is compliant with any requirements that may exist for the specific material.

The Outgoing MTA Checklist is linked here. In the event that the material is derived from human subjects, please also complete the Supplemental Questions, linked here.

For specific processes regarding Outgoing MTA, please see below:

Academic Recipients of WARF Owned Material

For material you have assigned to WARF, WARF, not UW-Madison, has the authority through ownership to share the material. In these instances, the researcher should connect with their contact at WARF, or mta@warf.org, to coordinate the agreement around the distribution of the material to the recipient. WARF generally uses the UBMTA for such transfers, and it can be a quick and easy process for all involved.

Human Subject Derived Material

Sharing material from human subjects requires a bit more care than sharing of other materials. With human subject material, UW-Madison has to make sure that the rights of the subjects or patients have been observed. This means ensuring that the material was acquired under proper IRB protocols, that informed consent was given, and that the informed consent covered the sharing. To help root out this information, RSP, the Office of Legal Affairs, and the IRB have put together the attached supplemental questionnaire. If the material to be shared was derived from human subjects under an approved IRB protocol or from patients for clinical purposes, we ask that this supplemental questionnaire be completed and uploaded to the WISPER record.

Material Created Using Other Materials

When material UW-Madison wishes to share is created using other materials, there may be obligations to the provider of the other material. In these instances, RSP will review the obligations (if any) that UW-Madison may have from the original provider to make sure UW-Madison doesn’t violate those other terms. Depending on the obligations, RSP may need to reach out to the original provider to ask permission or even tailor the Outgoing MTA to comply with the underlying obligations from the original provider. If the researcher already has permission to share from the original provider, it is helpful to have this documented from the provider and give this information to RSP to help streamline the process.

Commercial Recipients

When the recipient of the material is a commercial entity, the expectations of the commercial entity may complicate UW-Madison’s ability to share the material. Quick discussions with both the commercial entity and the researcher can help us determine how best to handle the transfer. If the material is not related to a WARF patent or otherwise assigned to WARF, and the commercial entity only needs the material for limited internal research and not to commercialize products or services, we likely can use a modified version of the simple letter agreement or AUTM Toolkit MTAs. If the commercial entity requires broader rights to the materials or there is more value in the materials that should be returned to UW-Madison, UW-Madison will bring WARF into the mix to help with the licensing. If the researcher has a WARF contact, please let RSP know so RSP can coordinate with the researcher and WARF regarding how best to handle the transfer. Depending on the needs of the commercial entity (such as confidentiality), this agreement may not go through WISPER or RSP. A final determination will be made while coordinating with the researcher and WARF. If the materials are related to a WARF patent or otherwise assigned to WARF, WARF will handle the agreement around the transfer. Please inform your WARF contact of the request, or licensing@warf.org.

Standard MTA Templates

Simple Letter Agreement:

Basic agreement to accomplish the transfer of materials. Developed by NIH, this agreement is accepted by almost all universities. The agreement restricts the use of the materials to not-for-profit research purposes only, and prohibits redistribution of the material without the consent of the original provider. This agreement can be used to transfer any material that requires minimal protections.

UBMTA:

Recognizing that there might need to be more protections for materials, the UBMTA provides additional terms to protect the rights of the providing institution. This agreement is used for the transfer of biological materials and requires both institutions to be signatories to the UBMTA Master Agreement. Once both institutions are signatories, this agreement to transfer materials is accomplished by both parties signing the implementing letter for the specific material transfer. This agreement can be used for the transfer of biological material where additional protections are needed. The UBMTA is only for transfers between non-profit/academic organizations.

AUTM MTA Templates:

While the UBMTA and Simple Letter Agreement are sufficient to transfer the vast majority of materials, some materials require special consideration. Transferring things such as chemicals often require more than the Simple Letter Agreement. And the UBMTA may not offer enough protection for sensitive materials, such as stems cells. Finally, the Simple Letter Agreement and the UBMTA were developed by NIH and are really aimed at domestic transfers. With universities operating on the global stage, additional templates are needed to do international transfers.

In order to accommodate these considerations, AUTM developed MTAs to address specific materials. These MTAs should be used for the specific material identified when additional protections are needed. They also should be used in instances where the University is transferring material outside of the US. The AUTM MTA templates are only for transfers between non-profit/academic organizations. They also allow for customization through additional terms.