Biomedical Engineering Reference
In-Depth Information
Biological Material Transfer Agreement (UBMTA) and Simple Letter
Agreement for the Transfer of Non-Proprietary Biological Material are widely
available and widely used standardized tools. For institutions that have signed
the UBMTA master agreement, materials can be transferred under the terms
of the UBMTA upon execution of an implementing letter for the particular
transfer. Often the problem in academic-to-academic transfer is not legal, but
instead one of the incentives, opportunity costs, and not-infrequent issue of
competitive withholding [18] .
Many interesting collaborations, however, involve a company and an aca-
demic laboratory, necessitating the existence of more complex MTAs depend-
ing on whether industry is the source of the material or its recipient.
Industry-to-academic MTAs are widely reported to be the most complex and
time-consuming contracts to negotiate by technology transfer offi ces and regu-
larly contain requests that “reach through” the research to future rights on
technologies that might be invented using the material or requests to create
embargo periods on publication while the research is reviewed for commercial
value and/or patentability. Other frequent elements of industrial MTAs are
nondisclosure agreements, restrictions on redistribution of the material outside
the specifi ed laboratory, or restrictions on allowed fi elds of use.
Not surprisingly, many inventions are thus encumbered by rights imposed
earlier in the research life cycle by MTAs. A classic example is the so-called
Golden Rice, a genetically engineered rice variety aimed at ending vitamin
defi ciency disorders in the global South. After all the parties involved in creat-
ing Golden Rice decided to give away the variety, studies indicated that 44
patented products or processes and at least 15 materials, many of which were
governed by MTAs, were potentially used in its development. The intellectual
and technical property landscape surrounding Golden Rice has reported that
the unfair use of one MTA had been particularly problematic [18].
9.4.2
Patent Licensing
Licensing of patents is often a major part of negotiating collaborations, or, if
not licensing the patents, then deciding on key elements of how any patents
emerging from the collaboration will be handled. A patent license grants
certain rights to practice a patented invention from the owner to the recipient.
The license lays out the rights granted, the freedoms given, and the require-
ments imposed and is a conditional grant, that is, if the licensee does not
comply with the requirements and obligations, then the right to practice is
nullifi ed [19] .
Collaborative research in the life sciences often starts at an early stage,
before any patents are fi led. Thus the negotiation will often be over ownership—
who will own the patent? The university or the company and what rights will
be licensed from the owner to the other parties and under what terms?
Two of the most common moving pieces in patent licensing are revenue
elements and fi eld-of-use restrictions. Revenues can be dealt with in multiple
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