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    Title:

    Material Transfer Agreements

    Publication date:

    3/31/2021

    Effective date:

    3/31/2021

    BRIEF

    Policy Summary

    A written Material Transfer Agreement (MTA) must be approved and signed by the Intellectual Property Office (IPO) before tangible research materials are provided to third parties (including other DOE labs). Berkeley Lab enters into more simplified MTAs with University of California campuses. If a third-party provider of tangible research materials seeks to transfer the material to Berkeley Lab under an MTA, IPO must review, approve and sign the MTA.

    Examples of tangible research material include cell lines, transgenic plants and animals, DNA and RNA, viruses, plasmids, and chemical compounds. Software is provided or received under an end user or source code license agreement, which are also reviewed, approved and signed by IPO.

    Who Should Read This Policy

    Employees and affiliates who transfer tangible research materials to or from Berkeley Lab

    To Read the Full Policy, Go To:

    The POLICY tab on this wiki page

    Contact Information

    Licensing Manager
    Intellectual Property Office
    [email protected]

    Title:

    Material Transfer Agreements

    Publication date:

    3/31/2021

    Effective date:

    3/31/2021

    POLICY

    A. Purpose

    At times, Lawrence Berkeley National Laboratory (Berkeley Lab) needs to, or finds it useful to, transfer tangible research material to, or obtain such material from third parties. A written Material Transfer Agreement (MTA) must be approved and signed by the Intellectual Property Office (IPO) before tangible research materials are provided to third parties, including other DOE labs. Berkeley Lab enters into more simplified MTAs with other University of California campuses. A MTA is required in order for Berkeley Lab to comply with its obligation under the UC-DOE Prime Contract to maintain the patentability of inventions, to foster appropriate technology transfer, to avoid liability for others' use or misuse of Berkeley Lab material, and to maintain appropriate control over the material. If a third-party provider of tangible research materials seeks to transfer its material under an MTA, IPO must review, approve, and sign that MTA to ensure that Berkeley Lab will comply with DOE requirements and sound business practices.

    B. Persons Affected

    Employees and affiliates who transfer tangible research material to or from Berkeley Lab

    C. Exceptions

    No exceptions

    D. Policy Statement

    1. At times, Berkeley Laboratory needs to, or finds it useful to, transfer tangible research material or obtain such material from third parties. Examples of tangible research material include cell lines, transgenic plants and animals, DNA and RNA, viruses, plasmids, and chemical compounds.
    2. Outgoing Transfers
      1. Appropriate uses of Berkeley Lab's outgoing transfers are to enable the recipient to evaluate the material's potential commercial utility or the recipient's interest in obtaining a commercial license from Berkeley Lab; to replicate, reproduce, evaluate, or confirm Berkeley Lab's research effort; or do research furthering Berkeley Lab's programmatic goals.
      2. Laboratory staff must observe the following procedures when Berkeley Lab transfers tangible research material to third parties. These procedures are established to enable Berkeley Lab to comply with its obligation under the UC-DOE Prime Contract to maintain the patentability of inventions, foster successful technology transfer, and avoid liability for others' use or misuse of Laboratory material, and maintain appropriate control over the material (e.g., the use of the materials may be limited to specific projects and preclude the further transfer of the materials to non-approved recipients).
        1. Contact IPO when you wish to transfer Berkeley Lab tangible research material; IPO will prepare an MTA.
        2. Transfer the tangible research material only after the MTA is signed by both IPO and the recipient.
        3. For any tangible research material to be transferred, appropriately label and include instructions for handling as necessary for safe use.
        4. Ship all tangible research materials through Berkeley Lab's Shipping and Receiving Department to ensure compliance with Export Control and other applicable laws.
    3. Incoming Transfers
      1. Generally, incoming transfers of tangible research material are generally not commercially available or have limited availability and are necessary or useful to further Berkeley Lab's programmatic goals. (For purchases of tangible research materials, go through the Procurement and Property Management Department.)
      2. Laboratory staff must observe the following procedures if the third-party supplier of tangible research material requires the use of an MTA:
        1. Contact IPO to review the MTA and negotiate any required modifications to the contract.
        2. Comply with the terms of the MTA. In particular:
          1. Confirm whether you can transfer the tangible research material to anyone else (virtually all MTAs prohibit transfer outside of Berkeley Lab, and many restrict transfer to a particular research group)
          2. Comply with any restrictions on use, e.g., typically for noncommercial use
          3. Comply with any pre-publication review or reporting requirements
        3. Contact IPO to negotiate modifications or exceptions if you wish to use or transfer the tangible research material in a way that is not allowed by the MTA
        4. Appropriately safeguard the tangible research material (e.g., segregate the tangible research material from Berkeley Lab materials and store it in a secure location), track the disposition of the tangible research material, and comply with return or destruction requirements either at the end of the MTA term or at the end of the research project. If the MTA requires the remaining tangible research material to be returned, send it through Berkeley Lab's Shipping and Receiving Department, either by registered mail or a recognized courier service such as Federal Express or DHL.

    E. Roles and Responsibilities

    Role

    Responsibility

    IPO Licensing Staff

    • Negotiates and approves MTA and any amendments
    • Keeps MTA records

    Berkeley Lab Researchers, Including Affiliates

    • Submit or forward MTA request to IPO
    • Appropriately label outgoing materials and secure third-party materials
    • Ship through the Shipping and Receiving Department
    • Comply with third-party MTA obligations, and request that IPO negotiate any needed changes

    F. Definitions/Acronyms

    Term

    Definition

    Tangible Research Material

    Items produced in the course of research that are not generally commercially available. Tangible research material includes such items as biological materials, chemical compounds, computer software, integrated circuit chips, prototype devices, and equipment that is not yet available on the market.

    Tangible research material is separate and distinct from intangible (or intellectual) property such as inventions, patents, copyright, and trademarks.

    Affiliates

    Non-Laboratory employees engaged in on-site Laboratory activities. Affiliates are subject to training in safety and other subjects. They are also issued a Berkeley Lab identification badge. Affiliates may receive system accounts, research access to facilities, and a per diem allowance for housing and living expenses.
    Examples: Facility users, scientific collaborators, students

    Intellectual Property (IP)

    Intellectual property (IP) refers to creations of the mind: inventions, creative, literary and artistic works, and symbols, names, images, and designs used in commerce. The means to protect IP include patents, trademarks, copyright and trade secrets. Patents protect inventions. Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services. Copyrights protect works of authorship, such as writings, software, music, and works of art that have been tangibly expressed. Trade secrets are information that companies keep secret to give them an advantage over their competitors. While Berkeley Lab has discretion to secure and license patents, trademarks and copyrights, it is prohibited by DOE policy from licensing trade secrets.

    Material Transfer Agreement (MTA)

    A contract that governs the transfer of tangible research materials between two organizations, when the recipient intends to use it for his or her own research purposes. The MTA defines the rights and obligations of the provider and the recipient with respect to the materials and any derivatives.

    Policy

    Statements or directives from the federal, state, or local government; the University of California; or Berkeley Lab senior management that set a course of action, define acceptable conduct, or implement governing principles.
    Example: Berkeley Lab Site Access

    IPO

    Intellectual Property Office

    G. Recordkeeping Requirements

    • IPO keeps records of all material transfer agreements.
    • Researchers must track the location and disposal of third-party tangible research materials obtained under an MTA.

    H. Implementing Documents

    None

    I. Contact Information

    Licensing Manager
    Intellectual Property Office
    [email protected]

    J. Revision History

    Date

    Revision

    By whom

    Revision Description

    Section(s) affected

    Change Type

    1/2/2012

    0

    H.Clark

    Re-write for wiki (brief)

    All

    Major

    9/14/2012

    1

    V.Wolinsky

    Re-write for wiki (policy)

    All

    Major

    12/17/2020
    D. Soustin Updated Contract 31 I clause numbers as per mod 1105 Source Requirement Documents Editorial
    3/31/2021 2 R. Carrington Periodic update. Minor policy clarifications. Updated office names and contact info. All Minor

    DOCUMENT INFORMATION

    Title:

    Material Transfer Agreements

    Document number

    03.03.001.000

    Revision number

    2

    Publication date:

    3/31/2021

    Effective date:

    3/31/2021

    Next review date:

    3/31/2026

    Policy Area:

    Agreements

    RPM Section (home)

    Conduct of R&D

    RPM Section (cross-reference)

    Section 5.07(B)(1)

    Functional Division

    IPO

    Prior reference information (optional)

    Section 5.07(B)(1)

    Source Requirements Documents

    Contract 31, Clause I.138, DEAR 970.5227-3, Technology Transfer Mission (AUG 2019) [SC alternate 2018] (prev. I.092)

    Implementing Documents

    None

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