SAMPLE MATERIAL TRANSFER AGREEMENT (MTA) - Intellectual Property Managementand Technology Licensing

Sample Material Transfer Agreement (MTA)

By: Dr. Frederic Erbisch, Director (Retired), Office of Intellectual Property, Michigan State University

1 . This Material Transfer Agreement is made and entered into as of the __________day of __________20 _______(the “Effective Date”) by and between ___________________ _________ (hereinafter referred to as “LENDER”) having its principle office at _________________________________ and ___________________________(hereinafter referred to as “BORROWER”) having its principle office at _____________________________________

2. In consideration of the mutual covenants contained herein and with the intention of being legally bound under the laws :

3. The “MATERIAL” covered by this Agreement is defined as and includes the following ____________________________________________________ (hereinafter referred to as “MATERIAL” ) developed by ______________________

4. BORROWER desires to obtain samples of the MATERIAL and the LENDER is willing to provide the MATERIAL to the BORROWER solely for the permitted uses and on the terms and conditions set forth in this Agreement.

5. BORROWER agrees that this material will not be released to any person other than the signatories of this Agreement except co-workers working directly under a signatory’s supervision who have agreed to abide by the terms and conditions of this Agreement. No one is permitted to take or send this MATERIAL to any other location, unless prior written permission is obtained from the LENDER; such permission will not be unreasonably withheld.

6. The MATERIAL has been developed over a substantial period of time at substantial expense and is of great importance to the LENDER business. BORROWER acknowledges that the LENDER is and will at all times remain the owner of the MATERIAL.

7. The BORROWER retains ownership of: (a) modifications which contain/incorporate the MATERIAL (except that, the LENDER retains ownership rights to the MATERIAL (included therein), and (b) those substances created through the use of the MATERIAL or modifications, but which are not progeny, unmodified derivatives or modifications (those substances that do not contain the original MATERIAL, progeny, unmodified derivatives of the LENDER). If either 2(a) or 2(b) results from the collaborative efforts of the LENDER and the BORROWER joint ownership may be negotiated.

8. This Agreement and the resulting transfer of MATERIAL constitute a restricted non-exclusive license for BORROWER to use the MATERIAL solely for not-for- profit purposes. MATERIAL will not be used for any purpose inconsistent with this Agreement and in connection with any activity that is subject to consulting or licensing obligations to any third party. Upon completion of the work for which this restricted license is granted, MATERIAL, which has not been destroyed, will be disposed of as explicitly directed by the LENDER. The LENDER retains title to the MATERIAL and BORROWER shall not obtain any ownership rights in MATERIAL.

9. MATERIAL is experimental in nature and it is provided AS IS WITHOUT WARRANTY OF ANY SORT, EXPRESSED OR IMPLIED, INCLUDING WITHOUT LIMITTION WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR USE. LENDER makes no presentation and provides no warrant that the use of the MATERIAL by BORROWER will not infringe any patent of proprietary rights of third parties.

10. BORROWER agrees that it will follow all applicable laws and guidelines set forth by proper authority regarding the use and handling of such MATERIAL.

11. BORROWER agrees that it will not use the MATERIAL in human subjects, in clinical trials, or for diagnostic purposes involving human subjects without the written consent of the LENDER.

12. The BORROWER shall be responsible for any and all import/export requirements and regulations for the reception of such MATERIAL.

13. If the BORROWER intends to use such MATERIAL to determine if a commercializable system can be developed as a result of the BORROWER having received this MATERIAL whether patentable or not, BORROWER shall promptly notify the LENDER in writing of the substance of each such discovery and of the filing of any patent application thereon. BORROWER agrees to negotiate in good faith prior to marketing of such discovery compensation to be paid by the BORROWER to the LENDER. Giving consideration to the contributions of the parties to the discovery and its development, such compensation may include royalties in the gross sales value of the worldwide sales of such discovery derived from the MATERIAL.

14. BORROWER shall provide LENDER with a manuscript of any proposed publication or presentation resulting from the study using MATERIAL at least sixty (60) days prior to submission thereof for publication or presentation. LENDER reserves the right to review any such manuscript and to require the removal of confidential matter in order to protect its proprietary rights and interests. LENDER shall notify BORROWER in writing within the sixty (60) day period concerning the removal of confidential matter and to suggest editorial modifications in the manuscript.

15. BORROWER hereby agrees, upon the request of the LENDER, to provide the LENDER with a report of observations related to the MATERIAL by providing the LENDER with a report describing the results of such research using the MATERIAL. To the extent that it is able, BORROWER will acknowledge LENDER’s contribution.

16. BORROWER hereby grants the LENDER a non-exclusive, world-wide royalty-free right to use for its internal research purpose any information or new material developed by BORROWER using the LENDER MATERIAL whether patentable or not. The LENDER agrees not to publish results involving BORROWER’s data without citing its source and giving credit of authorship/creatorship to BORROWER, provided that is desired by BORROWER.

17. Either party may disclose the other party’s confidential information to a governmental authority if such party reasonably believes that such disclosure is required by applicable law or regulation or by subpoena or order of court of competent jurisdiction, provided that such disclosure is subject to all applicable governmental or judicial protection available for like material and reasonable advance notice is given to other party.

18. BORROWER will exercise all reasonable precautions to protect the integrity and confidentiality of the MATERIAL, and BORROWER shall maintain records of the location of all MATERIAL. BORROWER will not remove the MATERIAL from BORROWER’s premises except to the extent necessary to fulfill its obligations under this Agreement.

19. This Agreement will terminate on the earliest of the following dates : (1) when the MATERIAL becomes generally available from third parties, (2) on completion of BORROWER’s current research with the MATERIAL, (3) on (30) thirty days written notice by either party to the other, or on _____________________, 20____.

20. This Agreement shall be governed by the laws of ________________________________________________________

21. IN WITNESS WHEREOF, the parties have caused their duty authorized representatives to execute this Agreement.

LENDER ___________________________ BORROWER _____________________

By : ______________________________ By : ____________________________

Name : ____________________________ Name : _________________________

Title : _____________________________ Title : __________________________

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