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INDUSTRY TO NON-PROFIT
UNIFORM BIOLOGICAL MATERIAL TRANSFER AGREEMENT (UBMTA)
DRAFT***JANUARY 4, 1993***DRAFT
Definitions:
PROVIDER: Company providing the Original Material.
(Enter name and address here):
Provider's Scientist: (Enter name and address here):
RECIPIENT: Institution receiving the Original Material.
(Enter name and address here):
Recipient's Scientist: (Enter name and address here):
Original Material: (Enter description of material here):
MATERIAL: Original Material plus Progeny and
Unmodified Derivatives. The MATERIAL shall not include (i)
Modifications or (ii) other substances created by the RECIPIENT through
the use of the MATERIAL which are not Progeny or Unmodified Derivatives.
Progeny: unmodified descendant from the MATERIAL, such
as virus from virus, cell from cell, or organism from organism.
Unmodified Derivatives: substances created by
RECIPIENT which constitute an unmodified functional sub-unit or an
expression product of the Original Material. Some examples include:
subclones of unmodified cell lines, purified or fractionated sub-sets of
the Original Material, proteins expressed by DNA/RNA supplied by
Provider, monoclonal antibodies secreted by a hybridoma cell line,
sub-sets of the Original Material such as novel plasmids or vectors.
Modifications: substances created by RECIPIENT which
contain/incorporate the MATERIAL (Original Material, Progeny or
Unmodified Derivatives).
Terms and Conditions of this Agreement
1. The MATERIAL is the property of PROVIDER and is to be used by
RECIPIENT solely for research purposes at RECIPIENT's institution only
and only under the direction of the Recipient's Scientist. The research
to be conducted by Recipient's Scientist [is/is not] restricted to the
project described in Attachment A. The MATERIAL will not be used in
human subjects or in clinical trials involving human subjects without
the written permission of PROVIDER. PROVIDER [has/has not] filed patent
applications claiming the MATERIAL or uses thereof.
2. The Recipient's Scientist agrees not to transfer the MATERIAL to
anyone who does not work under his or her direct supervision at
RECIPIENT's institution without the prior written consent of PROVIDER.
Recipient's Scientist shall refer any request for the MATERIAL to
PROVIDER. To the extent supplies are available, PROVIDER or Provider's
Scientist agrees to make the MATERIAL available under a UBMTA to other
scientists (at least those at non-profit or governmental institutions)
who wish to replicate Recipient's Scientist's research.
3. (a) RECIPIENT shall have the right, without restriction, to
distribute substances created by RECIPIENT through the use of the
MATERIAL only if those substances are not Progeny, Unmodified
Derivatives, or Modifications.
(b) Upon notice to PROVIDER and under a UBMTA (or an
agreement at least as protective of PROVIDER's rights), RECIPIENT may
distribute Modifications to non-profit or governmental organizations for
research purposes only.
(c) Upon written permission from PROVIDER, RECIPIENT may
distribute Modifications for commercial use. It is recognized by
RECIPIENT that such commercial use may require a commercial license from
PROVIDER and PROVIDER has no obligation to grant such a commercial
license. Nothing in this paragraph, however, shall prevent RECIPIENT
from granting commercial licenses under RECIPIENT's patent rights
claiming such Modifications.
4. (a) Ownership of tangible property as between PROVIDER and RECIPIENT
is defined in Attachment B.
(b) RECIPIENT is free to file patent applications claiming
inventions made by RECIPIENT through the use of the MATERIAL but agrees
to notify PROVIDER upon filing a patent application claiming
Modifications or uses of the MATERIAL.
5. (a) Except as expressly provided in this Agreement, no rights are
provided to RECIPIENT under any patents, patent applications, trade
secrets or other proprietary rights of PROVIDER. In particular, no
rights are provided to use the MATERIAL or Modifications and any related
patents of PROVIDER for profit-making or commercial purposes, such as
sale of the MATERIAL or Modifications, use in manufacturing, provision
of a service to a third party in exchange for consideration, or use in
research or consulting for a for-profit entity under which that entity
obtains rights to research results.
(b) If RECIPIENT desires to use the MATERIAL or
Modifications for such profit-making or commercial purposes, RECIPIENT
agrees, in advance of such use, to negotiate in good faith with PROVIDER
to establish the terms of a commercial license. It is understood by
RECIPIENT that PROVIDER shall have no obligation to grant such a license
to RECIPIENT, and may grant exclusive or non-exclusive commercial
licenses to others.
(c) If the research involving the MATERIAL results in an
invention or a Modification that may be commercially useful, Recipient's
Scientist agrees to promptly disclose the invention or Modification to
RECIPIENT's office responsible for technology transfer activities and to
disclose PROVIDER's role as supplier of the MATERIAL used as well as the
role, if any, of any of PROVIDER's employees in creating the invention
or Modification. Inventorship for such invention or Modification shall
be determined according to U.S. Patent Law. RECIPIENT, in cooperation
with Recipient's Scientist, shall promptly supply PROVIDER with a copy
of the disclosure (and/or a sample of the Modification) which PROVIDER
shall, for a five-year period, hold in confidence and use only for
PROVIDER's evaluation purposes. If RECIPIENT or PROVIDER determines
that patent applications should be filed, PROVIDER shall have thirty
(30) days to decide whether it will support patent filing costs. In
consideration of PROVIDER's supporting those costs and supplying the
MATERIAL, RECIPIENT, to the extent it is able to do so under its
policies and obligations to sponsors of the research, hereby grants
PROVIDER a ninety-day (90-day) period (after the filing of a U.S. patent
application claiming the invention or Modification or after the supply
of a sample of the Modification if no patent application is to be filed)
to negotiate the terms of a [worldwide] [exclusive/non-exclusive]
commercial license. Such a license shall include a reasonable royalty
based on the respective parties' contributions and relevant industry
standards and, subject to RECIPIENT's policies, shall include such other
terms as are typical in licenses of similar technology from non-profit
organizations to for-profit organizations. If there is no agreement on
license terms during the above period, RECIPIENT shall be free to offer
commercial license rights to third parties.
6. The provision of the MATERIAL to RECIPIENT shall not alter any
preexisting right to the MATERIAL. If PROVIDER has granted any rights
to a third party (other than the customary rights granted to the federal
government or non-profit foundations) which would affect RECIPIENT,
those rights are listed in Attachment C.
7. Any MATERIAL delivered pursuant to this Agreement is understood to be
experimental in nature and may have hazardous properties. PROVIDER
MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER
EXPRESSED OR IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF
THE MATERIAL WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK, OR
OTHER PROPRIETARY RIGHTS.
8. RECIPIENT assumes all liability for damages which may arise from its
use, storage or disposal of the MATERIAL. PROVIDER will not be liable
to RECIPIENT for any loss, claim or demand made by RECIPIENT, or made
against RECIPIENT by any other party, due to or arising from the use of
the MATERIAL by RECIPIENT, except to the extent caused by the gross
negligence or willful misconduct of PROVIDER.
9. This Agreement shall not be interpreted to prevent or delay
publication of research resulting from the use of the MATERIAL or
Modifications. Recipient's Scientist agrees to provide appropriate
acknowledgment of the source of the MATERIAL in all publications and, if
requested, agrees to send PROVIDER a copy of any such publications at
the time of submission for publication.
10. RECIPIENT agrees to use the MATERIAL in compliance with all
applicable statutes and regulations including, for example, those
relating to research involving the use of animals or recombinant DNA.
11. (a) This Agreement will terminate on the earliest of
the following dates: (1) when the MATERIAL becomes generally available
from third parties, for example, through reagent catalogs or from public
depositories, or (2) on completion of RECIPIENT's current research with
the MATERIAL, or (3) on thirty (30) days written notice by either party
to the other, or (4) on the following date (insert date). Paragraphs 7
and 8 shall survive termination.
(b) If termination should occur under 11 (a)(1), RECIPIENT
shall be bound to the PROVIDER by the least restrictive terms applicable
to MATERIAL obtained from the then-available sources.
(c) Except as provided in 11 (d) below, on termination of
this Agreement under 11 (a)(2), (3), or (4) above, RECIPIENT will
discontinue its use of the MATERIAL and will, upon direction of
PROVIDER, return or destroy any remaining MATERIAL. RECIPIENT will also
either destroy Modifications or remain bound by the terms of paragraphs
4 and 5 as they apply to Modifications.
(d) In the event PROVIDER terminates this Agreement under
11 (a)(3) other than for breach of this Agreement or with cause such as
an imminent health risk or patent infringement, PROVIDER will defer the
effective date of termination for a period of up to one year, upon
request from RECIPIENT, to permit completion of research in progress.
12. The MATERIAL is provided [with/without] a fee which [is/is not]
solely to reimburse PROVIDER for its distribution costs. The amount of
the fee, if any, is $ (insert amount).
13. The following additional or alternate terms are also agreed to by
the parties:
(insert any additional terms here)
AGREED:
PROVIDER
Company:
Address:
Authorized Official:
Title:
Signature: Date:
Provider's Scientist
Name:
Title:
Signature: Date:
RECIPIENT
Institution:
Address:
Authorized Official:
Title:
Signature: Date:
Recipient's Scientist
Name:
Title:
Signature: Date:
Attachment A
[RECIPIENT describes the research project in which the MATERIAL will be
used.]
Attachment B
Belonging to PROVIDER
MATERIAL
- Original Material
- Progeny
- Unmodified Derivatives
Belonging to RECIPIENT*
Modifications (however PROVIDER retains ownership rights to any form of
the MATERIAL included therein).
Those substances created through the use of the MATERIAL or
Modifications, but which are not Progeny, Unmodified Derivatives or
Modifications (e.g., do not contain the Original Material or Unmodified
Derivatives).
* If resulting from the collaborative efforts of PROVIDER and
RECIPIENT, joint ownership is a possibility.
Attachment C
[PROVIDER describes any preexisting obligations that PROVIDER has to
third parties (other than the federal government or non-profit
foundations) which would affect RECIPIENT.]