World Intellectual Property Organization

San Diego State University (SDSU), Graduate and Research Affairs, Proprietary Material Transfer Agreement

Subject matter

Biological Material: The term "MATERIAL" shall include PROGENY, UNMODIFIED DERIVATIVES and any modification to MATERIAL, if such modified MATERIAL is substantially based on or incorporates a substantial element of ORIGINAL MATERIAL, or any modification which is not new or not unobviously distinct from ORIGINAL MATERIAL.

Summary of use(s)

The MATERIAL is the property of PROVIDER and is to be used by RECIPIENT solely for research purposes at RECIPIENT'S institutional facilities only and only under the direction of the RECIPIENT'S SCIENTIST. The research is restricted to the project described in ATTACHMENT A.

Purpose or background

As a matter of convenience, SDSU has agreed to abide by all terms and conditions of the Uniform Biological Material Transfer Agreement ("UBMTA") as published in the Federal Register on March 8, 1995. Transfer of biological materials between institutions that are signatories to the UBMTA may be completed by using a brief Implementing Letter which identifies the material and the parties and confirms that the transfer is being made under the terms of the UBMTA. For a copy of the UBMTA, see the separate entry in this contracts database.

However, transfers involving proprietary materials and/or commercial entities may require greater levels of protection and the more detailed Proprietary Material Transfer Agreement may be preferred or required. A copy of a Proprietary Material Transfer Agreement is attached to this contract summary.

For non-proprietary materials or transfers to non-profit entities, it may be simpler to use a Simple Agreement which is shorter and contains fewer restrictions and reporting requirements. For a copy of the Simple Agreement, see the separate entry in this contracts database.

Contact details

San Diego State University (SDSU), Division of Research Administration, Graduate and Research Affairs, 5500 Campanile Drive, San Diego, CA 92182, United States of America.
Tel: (619) 594-5200

 

SAN DIEGO STATE UNIVERSITY

GRADUATE AND RESEARCH DIVISION

PROPRIETARY MATERIAL TRANSFER AGREEMENT

Definitions:

Please fill in all of the blank lines below. Attach additional sheets(s) if more space is needed:

PROVIDER:
(Organization providing the ORIGINAL MATERIAL)

RECIPIENT:
(Organization receiving the ORIGINAL MATERIAL)

Institution: Institution:
Address: Address:
City, State, Zip: City, State, Zip:

 

PROVIDER SCIENTIST:

RECIPIENT SCIENTIST:

Name:

Name:
Title: Title:

 

ORIGINAL MATERIAL (Description of Material):
Description:

MATERIAL: The term "MATERIAL" shall include PROGENY, UNMODIFIED DERIVATIVES and any modification to MATERIAL, if such modified MATERIAL is substantially based on or incorporates a substantial element of ORIGINAL MATERIAL, or any modification which is not new or not unobviously distinct from ORIGINAL MATERIAL. However, nothing herein shall be construed to prevent Recipient from seeking patent protection on an invention arising from its use of MATERIAL or to prevent or delay publication of research results arising from use of the MATERIAL.

PROGENY: Unmodified descendant from the MATERIAL, such as virus from virus, cell from cell, organism from organism.

UNMODIFIED DERIVATIVES: Substances created by RECIPIENT, which constitute an important unmodified functional sub-unit of the ORIGINAL MATERIAL. Some examples include: subclones of unmodified cell lines, purified or fractionated sub-sets of the ORIGINAL MATERIAL when those were known to PROVIDER, proteins expressed by RNA/DNA supplied by PROVIDER, DNA/RNA sequences for a protein with an activity known to or suspected 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.

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 institutional facilities only and only under the direction of the RECIPIENT'S SCIENTIST. The research is restricted to the project described in ATTACHMENT A.

2. The RECIPIENT'S SCIENTIST agrees not to transfer the MATERIAL to anyone who does not work under his or her direct supervision at RECIPTENT'S facilities 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 Materials Transfer Agreement to other scientists (at least those at non-profit or governmental institutions) who wish to replicate the research of the RECIPIENT'S SCIENTIST.

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 written notice to PROVIDER and under a Materials Transfer Agreement, 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 between PROVIDER and RECIPIENT is defined in ATTACHMENT A.

(b). RECIPIENT is free to file patent applications claiming inventions made through the use of the MATERIAL but agrees to notify PROVIDER if it files patent applications 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 any 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 obligations 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 with responsibility for technology transfer activities and disclose PROVIDEWS role as supplier of the MATERIAL used as well as the role, if any, of any of PROVIDEWS employees in creating the invention or Modification. Inventorship for such invention or Modification shall be determined according to US 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 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 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 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, PROVIDER shall be free to offer conunercial 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 other non-profit foundations) which would affect RECIPIENT, those rights are listed in ATTACHMENT B.

7. PROVIDER shall inform RECIPIENT of any toxicity, health risks, etc. associated with the MATERIAL, which are known to PROVIDER. RECIPIENT'S SCIENTIST shall inform PROVIDER of any toxicity, health risks, etc. discovered through the use of the MATERIALS.

8. Any MATERIAL delivered pursuant to this Agreement is understood to be experimental in nature, and PROVIDER MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS 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 RIGHTS.

9. 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 the RECIPIENT, or made against the 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 the PROVIDER.

10. 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 acknowledgement of the source of the MATERIAL in all publications and, if requested, agrees to send PROVIDER a copy of any such publications at the tiine of submission or publication.

11. 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 human and animal subjects or recombinant DNA.

12. (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 catalogues or from a repository under the Budapest Treaty, 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 __________ Paragraphs 8 and 9 shall survive termination.

(b). If termination should occur under 12 (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 12 (d) below, on termination of this Agreement under 12 (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 Modification 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 12 (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 complete research in progress.

13. The MATERIAL is provided for a fee of $______________ (U.S.), due contemporaneously upon execution of this Agreement. This fee includes $ ______________, which is the cost incurred by the PROVIDER for the preparation of the MATERIAL and $ _____________ , which is solely to reimburse PROVIDER for its shipping and special handling costs.

14. RECIPIENT agrees to use reasonable efforts (which shall be at least as great as the efforts to maintain the confidentiality of its own confidential information) to maintain the MATERIAL technology in confidence, and to use the same only in accordance with this Agreement. Such obligation of confidentiality shall not apply to information, which RECIPIENT can demonstrate:

(a). was at the time of disclosure in the public domain;

(b). has come into the public domain after disclosure through no fault of RECIPIENT or its employees;

(c). was known to RECIPIENT or its employees prior to disclosure thereof by PROVIDER; or

(d). was lawfully disclosed to RECIPIENT without prior obligation of confidence by a third party who was not under an obligation of confidence to RECIPIENT with respect thereto. The foregoing obligations of confidentiality shall survive termination of this Agreement.

15. The following additional or alternate terms are also agreed to by the parties:

 

Please fill in all of the blank lines below. Attach additional sheet(s) if more space is needed.

PROVIDER:
Organization providing the ORIGINAL MATERIAL

RECIPIENT:
Organization receiving the ORIGINAL MATERIAL

 

Name of authorized Institutional Representative:

Name of authorized Institutional Representative:

Signature:  Date: Signature: Date:
Printed Name: Printed Name:
Title: Title:
Address: Address:
City, State, Zip: City, State, Zip:

 

PROVIDER SCIENTIST:

RECIPIENT SCIENTIST:

Name: Name:
Title: Title:
Address: Address:
City, State, Zip: City, State, Zip:
Signature: Date: Signature: Date:

 


ATTACHMENT A

BELONGING TO PROVIDER:

Original Material:

Progeny:

Unmodified Derivatives:

 

BELONGING TO RECIPIENT:

MODIFICATIONS: (However PROVIDER retains ownership rights to any form of the MATERIAL provided 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).

RESEARCH PROJECT (Brief Description):

 


ATTACHMENT B

PROVIDER describes any preexisting obligations that PROVIDER has to third parties (other than the federal government or non-profit foundations) which would affect RECIPIENT:

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