| October 2004 |
| LICENSING AND TECHNOLOGY
DEVELOPMENT- Back |
LICENSING & TECHNOLOGY DEVELOPMENT
Corporate MTAs: Panacea or Boondoggle?
For the researcher, the principal questions are
always where and from whom can I get the Materials to do the science?
Where the provider of the Materials is a corporate for-profit entity,
the melding of an agreement reflective of two very different entities
and their respective missions can be challenging and time-consuming.
The Panacea:
Materials Transfer Agreements, or "MTAs" arose as a result of
folks attempting to facilitate academic use of collective and individual
scientific resources. Whether publicly or privately developed, those resources,
when readily and easily exchanged, could mean the arriving at
the finish line with inventions or discoveries sooner rather than later.
If we could all just "get along," the MTA could become the Panacea.
One must ask: What does
"getting along" entail?
Now, the Boondoggle:
More often than not companies seem to exist in a state of denial. While
they attest to an understanding of the constraints of the scientist operating
within a not-for-profit academic institution, they more often than not
put us to the test. What's the test? How badly do you want or need
the Materials? They will challenge our resolve in the following
ways, to name a few:
- Proper Parties:
Sending the MTA in the name of the scientist. (JHU is the proper
party, not the scientist.)
- Publication
Restrictions: Requiring open delays and consent by the company
prior to publication violates this and most every university's mission
and policies.
- Defining the
Materials: Often the company defines the Materials to
include the scientist's discoveries, data, indeed, any information generated
in the course of the research under the MTA.
- Licenses:
The MTA is reconfigured before your very eyes from a simple transfer
of materials to a broad royalty-free commercial license to any invention
or discovery related to the research! Great caution must be
exercised to assure that these rights do not conflict with or supersede
the rights of the sponsor under whose funding the research is conducted.
Conclusion:
Ask Yourself:
- Asking the
company to 'walk the walk': Early intervention into a company's
state of denial may speed things along. A reminder of our status as
a not-for-profit university sometimes gets some attention. (Usually
the mere mention of the taxation authorities gets some well-deserved
attention!)
- "How badly do you want or need
the Materials?" Also, communicating to our MTA negotiator
as to how these Materials figure into a research project, including
whether they are unique or otherwise unavailable except under the MTA,
allows the negotiator to 'work smart' in achieving closure on the agreement.
- "Is the scale careening in favor of
the for-profit interest?" Assessing the true value of the
Materials in the research is key to achieving a reasonable balance between
the University's and the company's interests. Ask whether or not the
rights conferred under the MTA are truly proportionate to the company's
contribution. This can be a very valuable exercise. Remember, it is
your expertise and university facilities that contribute to any fruits
of the research.
In summary, the Association of University Technology
Managers (AUTM) has addressed the significant obligation of a non-profit
research institution to ensure that the public benefits from its research.
Achieving reasonable compromise between the vastly differing missions
of the not-for-profit and the for-profit in the context of that urgent
MTA can be quite a challenge!
For more information please contact:
Julia M. Brill
Copyright and Material Transfer Officer
Licensing and Technology Development
410 516-4971
jbrill7@jhmi.edu
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