Material Transfer Agreements (MTA's)
- What is a material transfer agreement?
- What is the purpose of the material transfer agreement?
- Who executes the material transfer agreement?
Non-Disclosure / Confidential Disclosure Agreements
- What is a non-disclosure agreement?
- Why is a non-disclosure agreement needed?
- Do we need a non-disclosure agreement if patent protection is in place?
- What is covered in a non-disclosure agreement?
Licenses
- What is a license?
- What rights are typically assigned to a licensee?
- How is the licensing revenue distributed?
Material Transfer Agreements (MTA's)
What is a Material Transfer Agreement? (Back to Top)
Sometimes the research and development efforts require acquisition of materials developed or identified by others. Examples of these materials may include but are not limited to biological materials such as cell lines, microorganisms or antibodies, and chemicals. Typically the transfer of these materials also includes proprietary information. Therefore a legal document called the Material Transfer Agreement (MTA) is necessary to be executed between the provider and the recipient.
What is the purpose of the Material Transfer Agreement? (Back to Top)
The primary goals of the MTA are to protect and clarify the intellectual property ownership rights and obligations of both parties and address the liability issues.
Who executes the MTA? (Back to Top)
An MTA is a legal document and it is executed by a designated institutional representative for each part. For Western Kentucky University the Office of Technology Transfer is responsible for the execution of the MTA’s.
Non-disclosure / Confidential Disclosure Agreements (NDAs)
What is non-disclosure agreement? (Back to Top)
A non-disclosure agreement (NDA), sometimes referred to as the confidentiality agreement, is a legal instrument to obligate two parties to protect privileged or proprietary information shared between the parties. Sometimes only one party is disclosing information so it is a one-way agreement, other times both parties share proprietary information, so it requires a two-way agreement.
Why is a non-disclosure agreement needed? (Back to Top)
The commercialization of intellectual property requires legal protection by appropriate means. Prior to implementing means to legally protect the idea, it is necessary to execute a non-disclosure agreement before sharing the enabling part of the intellectual property.
Do we need a non-disclosure agreement if patent protection is in place? (Back to Top)
An NDA is critical during the period while a patent application is being prosecuted. Once a patent is issued then, the information is part of the public domain; the legal ownership rights are established with the grant of the patent, not before. It is important to note that any additional information not covered by the patent is still protected by the NDA.
What is covered in a non-disclosure agreement? (Back to Top)
The NDA is intended to clarify the legal obligations and rights of both parties related to the information exchanged and how long the information will kept confidential.
Licenses
What is a license? (Back to Top)
It is a legal instrument that allows a licensee certain rights to use intellectual property under agreed upon terms and for a defined period of time.
What rights are typically assigned to a licensee? (Back to Top)
The licensing terms depend upon the business needs and the obligations of the university. A licensee’s rights may be exclusive or non-exclusive for a given field of application and for a defined geographical area. The rights may also include some combination of product development, manufacturing, marketing, and sales and distribution, again in a defined geographical area for a specific application.
How is the licensing revenue distributed? (Back to Top)
In compliance with the WKU IP policy the net licensing revenue is distributed as follows: