MTAs: BOTH SIDES NOW!

Marjorie Forster, Assistant Vice President, Research and Global Health Initiatives, University of Maryland Baltimore

M. Jeremy Trybulski, Consultant, formerly with the University of California, Office of the President

Melissa White, Contracts Manager, Merrimack Pharmaceuticals, Inc.

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AGENDA

• Steps to take prior to negotiation

• Standard MTA Definitions

• Mock Negotiation

• Take Home Messages

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Steps to take prior to negotiation: UNIVERSITY PERSPECTIVE

• CONFLICT CHECK– Would obligations to any other third party pose a conflict (i.e.

one that would prevent University’s grant of an exclusive option to inventions)?

• IP-Related Due Diligence – Pre-existing invention disclosures?– Background IP– Patents filed – Licenses

• Understanding of Research & Material (being sent out by Uni or received by Uni)

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Steps to take prior to negotiation: INDUSTRY PERSPECTIVE

• Research PI/UNI – Who is the PI/Lab? Have we worked with him/her before?– What papers has he/she published? – Who else in industry have they collaborated with in the past, or current industry

partners?

• IP Due Diligence – Pre-existing invention disclosures? – Patents filed– Background IP– Licenses

• Assess Outcomes/Deliverables– Any Modifications to the Material? – Likelihood of new IP?

• Potential Complications

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Steps to take prior to negotiation:Why is this important?

• Because you can’t (or shouldn’t) negotiate ANY contract without knowing the circumstances at hand! – More apt to miss something or split-up– RISK!

• Puts you in a better negotiating position!

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“STANDARD” MTA DEFINITIONS

• Material• Progeny• Unmodified Derivatives• Modifications• Confidential Information• Results• Inventions

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Material*

Original Material, as described herein, to include Progeny, Unmodified

Derivatives, and Confidential Information

* The definition CAN contain one or more of these elements, but not necessarily all

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Progeny

Unmodified descendants from the Material

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Unmodified Derivatives

Substances created by the Recipient in the course of the Research that

constitute an unmodified functional subunit or product expressed by the

Material

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Modifications

Substances developed by the Recipient in the course of the

Research that contain or incorporate the Material

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Confidential Information

Any information, know-how, and/or documentation related to the

Material that is provided by Provider to Recipient and is marked as

“confidential” by Provider

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Research Results

All research results created in the direct performance of the Research

defined in the Scope of Work

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Inventions

Any patentable invention that is conceived AND first reduced to

practice in the performance of the Research

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MOCK NEGOTIATION….

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TAKE HOME MESSAGES

• The more you know about the circumstances of the MTA and the Material, the better situated you are for negotiations

• Communication is essential to a negotiation - if industry proposes crazy changes, there’s likely (but not always) a reason why!!! Before spending time redlining another version, go back to your potential industry partner and inquire! Ask WHY changes were made to understand the REASON behind a change. It may change your outlook on negotiations…

Questions?

THANKS!