CDAs and MTAs Part of CVIPs responsibilities include review and signatory approval for Confidential Disclosure Agreements (CDAs) and Materials Transfer Agreements (MTAs) to ensure protection of the University's intellectual property, and to protect the institution against improper use of biological materials.
Confidential Disclosure Agreements (CDAs) Before disclosing confidential information to others, you should carefully consider the consequences. Confidential Disclosure Agreements are used to protect the rights of the University and the researcher whenever confidential information is provided to or received from an outside source. CVIP can assist and advise you through this process and will prepare the appropriate CDA whenever necessary simply contact our office at (413) 545-3606 or email at cvip@research.umass.edu. Confidential information should be protected for a number of reasons. One of the most important reasons is to maintain control over your information thereby preventing others from using your ideas. This can protect the novelty of the invention prior to patenting. Novelty is a key standard used to assess the patentability of an invention (i.e. whether the invention is new, or has entered the public domain). Often, the reason a patent application is not patentable is non-confidential disclosure of information. A CDA can therefore be critical protection when disclosing your information prior to filing a patent application. Information is no longer considered confidential after public disclosure unless that disclosure was protected under a CDA. Faculty are often called upon to give talks on campus, at other institutions, at meetings, and at companies. Topics typically contain information about ongoing research or early stage concepts, for which research has not begun. When improperly disclosed, such information is considered to have entered the public domain and therefore may not be patentable. If you make a presentation on work that is, or could be, the subject of a patent and may be a potentially commercializable invention, we strongly urge you to consult with us beforehand. We can advise you on how to best protect your work, which may ultimately be a source of revenue for you and your laboratory. Remember the following points:
- Public disclosure prior to filing a patent can bar the work from being patented in the U.S. or abroad.
- Submittal of papers to refereed journals is not public disclosure and will not affect the ability to patent an invention, as long as it is not published or circulated outside of the journal reviewers.
- Once a patent application is filed, you are free to discuss the work, but limit such discussions to the areas covered by the patent application.
- The use of a Confidential Disclosure Agreement is widely accepted and protects you from loss of intellectual property rights.
Materials Transfer Agreements (MTAs) Materials Transfer Agreements must be used whenever the University provides tangible materials to, or receives tangible materials from an outside source. CVIP manages and negotiates Materials Transfer Agreements between the University, other research institutions and commercial organizations to ensure that the research interests of the University and its researchers are protected. Key personnel from CVIP are the only authorized signatories who can execute MTAs on behalf of the University. A Materials Transfer Agreement is a legal contract that governs the transfer of materials to and from the University for research purposes. Materials may include cultures, cell lines, proteins, bacteria, transgenic animals, nucleotides, pharmaceuticals and other chemicals. Please contact the CVIP office at (413) 545-3606 or email at cvip@research.umass.edu when you need an MTA.
Why do we need MTAs? MTAs are needed whenever transferring or receiving materials. Most universities and organizations require that an MTA be in place between the supplier and the recipient prior to releasing or receiving any materials. The University of Massachusetts is no exception. It is important that CVIP review all MTAs to ensure that the University does not agree to terms that may be in conflict with the requirements of sponsored research grants, fellowships, etc. Some of the important issues to be negotiated are intellectual property rights, indemnity clauses and publication rights. When the University is the supplier of materials, the MTA provides the following information:
- Defines what material is being provided to the recipient;
- Defines how the material will be used and disposed of by the recipient;
- Defines ownership of the material provided to the recipient;
- Assigns intellectual property rights jointly to the University and the recipient on modified materials;
- Assigns intellectual property rights to the recipient for new substances and uses;
- Grants the recipient first option to obtain an exclusive worldwide license from the University on modified materials, substances, or developments;
- Protects the University and the researcher from litigation arising from the use, storage or disposal of the materials.
An MTA is important when you are supplying materials to an outside researcher because the MTA protects the supplier of materials by restricting use of the materials to academic research. It can also prevent commercial exploitation of your material, control release of the materials to a third party, and ensure you are appropriately acknowledged in publications. When the University of Massachusetts is the recipient of materials, the MTA provides the following information:
- Defines what material is being received
- Defines how the material will be used and disposed of
- Defines ownership of the material received
- Grants the supplier first option to obtain an exclusive worldwide license from the University on modified materials, substances, or developments
- Protects the supplier from litigation arising from the use, storage or disposal of the materials
Download MTA Guidelines here: Guidelines in PDF
