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Issues of Concern for DPL

It is important that DPL reviews all Material Transfer Agreements (MTA) and Confidentiality Agreements (CDA) in order to make sure that the University does not agree to terms that may be in conflict with the mission of an academic institution, provisions of research grants, fellowships, consultancies, and/or any other existing obligation. (e.g. terms of some grant funding bodies are such that signing an MTA which gives the provider sole rights to the results of grant funded research would be a breach of the grant conditions). Among the important issues that may need to be negotiated are definitions, publication rights, IP rights, and indemnities.

Definition of Materials or Confidential Information

Materials should only be defined as:

• Original Material (DNA, RNA, Protein, Cell, Organism)

• Progeny - unmodified descendant from the Original Material (virus from virus, cell from cell, organism from organism)

• Unmodified Derivatives - unmodified subset of the Original Material (subcloned cells, purified or fractionated material, cells from an organism)

Confidential Information:

• should be defined
• should be defined to only include information indicated or marked as confidential that has been provided by the other party

Publication

• Agreeable to provide copies of proposed publications or other disclosures for review by the other party (usually 30-60 days prior to submission)
• Should be defined periods of time for the other party to review the proposed publication (30-60 days is average)
• Other party should not to control the content of the academic publication and dissemination of knowledge to benefit the general public

Intellectual Property Rights

• Ownership of intellectual property generated by externally-funded research is vested with the University.
• Acceptable for a commercial provider to receive an option to a royalty-bearing licence to any inventions arising from the use of the materials
• Unacceptable for commercial providers to claim outright ownership of IP generated by the USF researcher**
• Unacceptable for commercial providers to ask for free licences to the research results**

**Such agreements mean that the provider is basically getting free contract research and if an invention is developed and commercialized, there is no return to the University or the inventor for their contribution.

Indemnities

Agreements frequently contain indemnity clauses that require the University to accept certain liabilities that are not acceptable. This means we can be asked to bear the economic responsibility for any and all claims, costs, damages, loss, liabilities and expenses that a third party may bring against the provider as a result of our use of the material. As a publicly funded research institution, USF is covered by Florida law.  In order for this term not to be interpreted as waiving our sovereign immunity under Florida law, the appropriate phrase needs to be included.

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Direct questions or comments to patents@research.usf.edu

Last updated January 15, 2003