Industry to Non-Profit
UNIFORM BIOLOGICAL MATERIAL TRANSFER AGREEMENT (UBMTA)
DRAFT***JANUARY 4, 1993***DRAFT
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)
[RECIPIENT describes the research project in which the MATERIAL will be used.]
Belonging to PROVIDER
- Original Material
- 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.
[PROVIDER describes any preexisting obligations that PROVIDER has to third parties (other than the federal government or non-profit foundations) which would affect RECIPIENT.]