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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, Senior Intellectual Property Specialist, Merrimack Pharmaceuticals, Inc.

MTA’s: BOTH SIDES NOW

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Overview of Agenda

Definitions

Obligations

Definitions & Obligations…GONE WILD!!

Taming Negotiations: Mutual Compromise

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MTA Definitions

Material Progeny Unmodified Derivatives Modifications Confidential Information Research 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 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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MTA Obligations

Ownership Publication Confidentiality Licensing Rights

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WHAT HAPPENS WHEN THE “BIG BAD WOLF” ARRIVES?

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Definitions and Obligations… GONE WILD!!!

“Material” includes know-how and information related to the Material

Research Results Provider owns the Research Results and can use such for any

purpose it determines Provider shall have a non-exclusive right to use the Research

Results for any purpose it determines, provided, however, that (a) it does not publically disclose such Research Results in advance of publication by Recipient, and (b) it will consult Recipient prior to filing a patent application that includes the Research Results so that the Parties can assess inventorship, etc.

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Definitions and Obligations… GONE WILD!!!

Modifications Provider owns Modifications that includes data and IP created

USING the Material

Licensing Rights Provider receives an outright grant of a license (exclusive or

non exclusive) for anything conceived using the Material Recipient shall, and hereby does, grant to Provider a

worldwide, non-exclusive license for non-commercial purposes…

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Definitions and Obligations… GONE WILD!!!

Inventions …shall mean any invention, whether patentable or not, that is

conceived in the performance of the Research …shall mean any invention that is conceived and/or reduced to

practice in the performance of the Research *…shall mean any invention that necessarily uses or

incorporates the Material (NUNI) Provider owns all Inventions and shall require that the Recipient

assign all right, title and interest in and to all Inventions to Provider

* NUNI language proposed by University, NOT industry

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Definitions and Obligations… GONE WILD!!!

Publication Recipient shall not publish or otherwise publically disclose the

Research Results until it receives prior written authorization from Provider

Provider will have up to 60 days to review such publication submission…

Confidential Information *Recipient shall remove all Confidential Information of Provider

from publication submission … includes the Research Results and the MTA

*This is usually a standard term, BUT University must handle it carefully…

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So how do you tame the “BIG BAD WOLF”?

NEGOTIATING…

through Mutual Compromise

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“Material”

BEFORE: “Material” includes know-how and information related to the Material

REMEMBER: “Material” CAN include Original Material, as described herein, its Progeny, Unmodified Derivatives, and Confidential Information…which may include KNOW-HOW and other information related to the Material! BUT such information MUST BE MARKED!

AFTER: ALL information provided by Provider to Recipient related to the Material will be marked as “confidential” by Provider and be considered as Confidential Information of the Provider. All [such] information, if delivered orally, will be reduced to writing and marked as “confidential” by Provider within [14] [30] days of initial disclosure.

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Research Results

BEFORE: Provider owns Research Results (and can use such for any purpose it determines)

AFTER: Recipient shall provide Provider with a summary of the

Research Results (Deliverable) that will be owned by Provider. Provider may have a time-limited, first right to negotiate a

license for any Invention that necessarily uses or necessarily incorporates the Material.

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Modifications

BEFORE: Provider owns Modifications that includes data and IP created using the Material

AFTER*: Provider owns the Material (to include Original Material,

Progeny, Unmodified Derivatives and Provider Confidential Information)

Recipient owns IP and data created at Recipient’s facility, to include any BIP utilized in the course of the Research.

*Cookie Dough Concept

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Modifications“Cookie Dough Concept”

Material from Provider = Chocolate Chips

IP created in the performance of the Research SOLELY by Recipient using the Material OR background IP of Recipient’s that is used in the performance of the Research = Cookie Dough

Chocolate Chips + Cookie Dough = Chocolate Chip Cookies

If a Chocolate Chip Cookie is created, Provider owns Chocolate Chips and Recipient owns Cookie Dough…

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Licensing Rights

BEFORE: Provider receives an outright grant of a license (exclusive or non

exclusive) for anything conceived USING the Material Provider owns all Inventions and shall require that the Recipient

assign all right, title and interest in and to all Inventions to Provider.

AFTER: Provider [may receive] or [shall be granted] a non-exclusive license

to Recipient’s rights in and to all Inventions for non-commercial purposes

Provider [may receive] or [shall be granted] a time-limited, first right to negotiate a commercial license to Recipient’s rights in and to all Inventions

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Inventions

BEFORE: …shall mean any invention, whether patentable or not, that is

conceived in the performance of the Research …shall mean any invention that is conceived and/or reduced

to practice in the performance of the Research …shall mean any invention that necessarily uses or

incorporates the Material (NUNI)

AFTER: Any invention that is conceived AND first reduced to practice in the

performance of the Research and is claimed in a patent application

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PublicationBEFORE: Recipient shall not publish or otherwise publically disclose the Research Results until it

receives prior written authorization from Provider. Provider will have up to 60 days to review such publication submission…

AFTER: Provider will be notified of any publications being made as a result of the Research

Provider will have up to [30] [*45] days to review such publication submission and notify Recipient of any Confidential Information contained therein

Recipient will remove all such Provider Confidential Information from publication submission of Research Results

Recipient will acknowledge Material and authorship, appropriately, in any such publications . Co-authorship will be determined in accordance with standard academic practices and acknowledged in such publication, as appropriate

* 30 is THE STANDARD, but 45 is OK so long as the PI is aware and agrees in advance

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Confidential Information

BEFORE: Recipient shall remove all Confidential Information of Provider from

publication submission upon Provider’s written request

AFTER: Recipient shall remove all Confidential Information of Provider

from the publication submission upon Provider’s written request. Notwithstanding, Provider agrees to allow the use and disclosure of sufficient information regarding the identify, structure and properties of the Material to enable the complete and accurate publication of the Research Results by Recipient.

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Confidential Information

BEFORE: “Confidential Information” includes the Research Results and the MTA

AFTER: Remain Silent!!

Public benefit Universities do not do secret work

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Questions?

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THANKS!