MATERIAL TRANSFER AGREEMENT
This Material Transfer Agreement (“MTA”) is between COMPANY, a ___________ corporation located at
_______________________________________ (“COMPANY”) and the Salk Institute, a California notfor-profit corporation located at 10010 North Torrey Pines Road, La Jolla, CA 92037 (“SALK”).
This Agreement sets forth terms and conditions under which COMPANY is willing to transfer “Material”
(as defined hereafter) to SALK.
1.
Material.
The
“Material”
that
is
covered
by
this
Agreement
refers
to
_______________________________________________ owned by COMPANY for further
research and development, and associated proprietary information and data that COMPANY
may disclose in its sole discretion. The term "Material" shall also include any Material contained
in any other composition of matter (including any MATERIAL contained or incorporated in any
biological material or any recombinant version thereof) and/or any chemical modification of the
Material. SALK will not make any chemical modification to the Material and will not evaluate the
Material for any of its chemical or physical properties, except to the extent expressly permitted
under Annex I (hereinafter, the “Study”). The Material is not being transferred exclusively to
SALK hereunder and COMPANY shall be free, in its sole discretion, to distribute the Material to
others and to use the Material for its own commercial and research purposes.
COMPANY agrees to provide SALK with quantities of the Material that are reasonably sufficient
for the performance of the Study, subject to the availability of the Material at COMPANY.
2.
Use of Material. COMPANY hereby allows SALK, and SALK agrees, to use Material solely for the
following non-commercial research within the laboratory of Dr______________ (“Investigator”),
as described in the Study.
SALK shall have no rights in the Material other than as expressly provided in this Agreement.
SALK will use the Material in compliance with all applicable laws and governmental regulations.
SALK acknowledges and agrees that COMPANY shall retain all right, title and interest in and to all
Material and that no right, title or interest to the Material shall vest in SALK by virtue of
COMPANY providing Material.
SALK agrees that nothing contained herein shall be deemed to grant to SALK any rights under
any COMPANY patents or other intellectual property rights, or any rights to use the Material
directly or indirectly, for any profit-making or commercial purposes.
3.
Limitations on Use. SALK shall not distribute or release the Material or Confidential Information
(as defined below) to any other person except members of Investigator’s laboratory who need to
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have access to the Material for the performance of the Study, and SALK shall not send the
Material or Confidential Information to any other location unless prior written permission is
obtained from COMPANY.
The Material is made available for investigational use only in laboratory animals and/or in vitro
studies as described in the Study hereto and shall not be used in human beings.
The Material shall not be used in research that would subject the Material to consulting or
licensing obligations to another corporation or business entity unless prior written permission is
obtained from COMPANY.
4.
Confidentiality. SALK agrees to hold in confidence the Material and information provided by
COMPANY under this Agreement and marked as confidential when provided (“Confidential
Information”) and shall not disclose the same to any third party without the prior written
consent of COMPANY unless required to do so by Court Order or by law, in which case SALK shall
(i) notify COMPANY in writing at least seven (7) days prior to making such disclosure to allow
COMPANY to assert whatever exclusions or exemptions may be available to it under such law or
regulation; and (ii) undertake best efforts to minimize the effect of any such disclosure. SALK
agrees, and shall require Investigator and all SALK personnel involved in the Study to agree, not
to use any Confidential Information for any other purpose other than for the purposes of this
Agreement without the prior written consent of COMPANY.
The above obligation shall not apply to CONFIDENTIAL INFORMATION which:
(a)
at the time of disclosure is in the public domain or thereafter becomes part of the public
domain through no fault of the party receiving such information;
(b)
the party receiving such information can conclusively establish was in its possession
prior to the time of disclosure as evidenced by written records;
(c)
is independently made available to the party receiving such information by a third party
who is not thereby in violation of a confidential relationship with the other party; or
(d)
the party receiving such information can conclusively establish was independently
developed by or on behalf of the party receiving such information without use of the
proprietary information of the other party as proven by written records.
Unless otherwise expressly agreed in writing, the obligation of Confidentiality contained in this
paragraph shall endure for a period of five (5) years from the Effective Date of this Agreement.
5.
Study Modifications. After the Effective Date of this Agreement, the scientific research studies
described in the Study may be amended or modified only by a written amendment to this
Agreement signed by the Parties.
6.
Study Completion. Upon completion of the Study, termination of this agreement, or at
COMPANY’s request in the event that Investigator becomes no longer affiliated with SALK, SALK
shall promptly provide COMPANY with a statement detailing the amount of used and unused
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Material, shall discontinue all use of the Material and COMPANY’s Confidential Information, and
shall promptly upon direction of COMPANY return or destroy the Material and or COMPANY’s
Confidential Information.
Upon completion of the Study Salk, or Investigator on its behalf, shall provide COMPANY with a
final written report summarizing the Study results, which COMPANY shall hold in confidence
until publication of the study.
7.
(a) Technology Rights. SALK represents that the Investigator and all other personnel who will
participate in the Study are employees or agents of SALK and are obligated to assign to SALK all
inventions made in the course of their employment, either by written agreement or by the
terms of employment.
(b) SALK shall promptly notify COMPANY, in confidence, of any and all discoveries or inventions
(whether patentable or not) (a) requiring use, in whole or in part, of the Material, or (b) made in
the Study (collectively referred to as “Inventions”), and of the filing or issuance of any patent
application thereon. SALK shall promptly provide COMPANY with a copy of the initial patent
application filed claiming a particular Invention, and COMPANY shall maintain such patent
application in confidence in accordance with Section 4. Subject to the first paragraph of this
Section 7, ownership of Inventions resulting from the Study shall be determined on the basis of
inventorship, which shall, in turn, be determined in accordance with U.S. patent law.
8.
Third-Party Obligations and Patents.
SALK hereby warrants that, to the best of its Office of Technology Development’s knowledge,
without having conducted an investigation, it does not have any current obligations toward third
parties, nor will it enter into agreements with third parties, that would interfere with its right or
ability to grant the above-mentioned rights to COMPANY under this Agreement.
9.
Use of Biological Samples.
If the Material is to be used with any samples of human blood, blood component or tissue from
a living or cadaveric donor (“Biological Samples”), SALK represents that it has the right to use the
Biological Samples for the Study, and to transmit the results of the research to DNA. In addition,
SALK represents and agrees that if Biological Samples are used for the Study, such Biological
Sample were collected or will be collected pursuant to applicable laws, regulations, and
government guidelines, including a legally effective informed consent under the Common Rule
and patient authorization under regulations implementing the Health Insurance Portability and
Accountability Act in effect at the time of collection and subject to approval by SALK’s Internal
Review Board.
10.
Publication. SALK maintains the right to make public, publish, submit in any pending or new
patent application in any jurisdiction, or otherwise divulge (referred to hereafter as “Publish”)
data and/or results from the Study and to reference the Material in that publication. However,
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SALK shall not Publish any such data or results without first submitting a copy to COMPANY
thirty (30) days prior to publication, so that COMPANY may take such measures as COMPANY
deems necessary to establish and preserve its proprietary rights. Notwithstanding the above,
COMPANY shall have the right to delete or have deleted from the publication any COMPANY
Confidential Information. COMPANY shall have the right to request a delay, and SALK agrees to
delay Publishing upon COMPANY’s written request for a period not exceeding sixty (60) days, in
order to protect the patentability of the results and/or COMPANY Confidential Information.
The COMPANY scientist(s) from whom the Material was obtained shall be referenced as the
source of the Material on all publications resulting from the scientific research hereunder as
appropriate under normal scientific conventions.
11.
Warranty. The Material is experimental in nature, is provided “as is,” and is provided solely for
research purposes WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED.
12.
Limitation of Liability. In no event shall COMPANY or its affiliates be liable for any use or other
disposition by SALK of the Material, or any loss, claim, damage or liability, of whatsoever kind or
nature, which may arise from or in connection with the use, handling or storage of the Material
by SALK, except to the extent that such loss, claim, damage or liability arises from the gross
negligence or willful misconduct of COMPANY.
13.
Indemnification To the extent permitted by applicable law, SALK agrees to indemnify, defend,
and hold COMPANY harmless from any liability (including attorneys’ fees) resulting from any
claim or demand arising from the Institution’s gross negligence or willful misconduct in using,
handling and/or storing the Material by or at SALK, or from Investigator’s and/or SALK’s gross
negligence or willful misconduct in performing the Research, except insofar as such claims or
liability arise out of the gross negligence or willful misconduct of COMPANY. SALK’s obligation to
indemnify hereunder is conditioned upon COMPANY promptly notifying Institution in writing of
all claims entitled to indemnification hereunder, giving SALK sole control of the defense thereof
and any related settlement negotiations, and cooperating and assisting in such defense.
COMPANY will hold SALK harmless from any claims of liability, including third party claims
asserted against COMPANY for its use of the Study results and claims arising from the license
granted in section 7(c) of this Agreement including claims made by or against sublicensees and
product liability claims, except insofar as such claims or liability result from SALK’s gross
negligence or willful misconduct.
14.
SALK Employees. SALK shall ensure that all employees and agents abide by all relevant
obligations set forth in this Agreement, including, but not limited to, those on confidentiality
and ownership of results.
15.
Assignment. This Agreement is not assignable by SALK, whether by operation of law or
otherwise, without the prior written consent of COMPANY. COMPANY may freely assign this
Agreement to any affiliate without obtaining any prior consent.
16.
Publicity / Endorsement. SALK agrees not to claim, infer, or imply endorsement by COMPANY or
any of its designees or affiliates of the Study, SALK, Investigator or personnel conducting the
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Study or any resulting publication, data, Invention or discovery. Notwithstanding the foregoing,
SALK shall have the right to identify and describe the contribution of COMPANY to the Study.
17.
Termination. COMPANY and SALK each reserve the right to terminate this Agreement at any
time upon written notice to the other party. The obligations of Paragraphs 4 (Confidentiality), 6
(Study Completion), 7 (Technology Rights), 8 (Third-Party Obligations and Patents), 9 (Use of
Biological Samples), 10 (Publication), 11 (Warranty), 12 (Limitation of Liability), 13
(Indemnification), 14 (SALK Employees), 16 (Publicity / Endorsement), 17 (Termination), and 18
(Miscellaneous) shall survive any termination or expiration of this Agreement.
18.
Miscellaneous.
A.
No Waiver. Any delay in enforcing a party's rights under this Agreement or any waiver
as to a particular default or other matter shall not constitute a waiver of such party's
rights to the future enforcement of its rights under this Agreement, excepting only as to
any express written and signed waiver as to a particular matter for a particular period of
time.
B.
Severability. Should any one or more of the provisions of this Agreement be held
invalid or unenforceable by a court of competent jurisdiction, it shall be considered
severed from this Agreement and shall not serve to invalidate the remaining provisions
thereof. The Parties shall make a good faith effort to replace any invalid or
unenforceable provisions with a valid and enforceable one such that objectives
contemplated by them when entering this Agreement may be realized.
C.
Choice of Law. This Agreement shall be governed by and shall be construed in
accordance with the laws of the State of California with the exclusion of its conflict of
law principles to the extent that they would refer to foreign law.
D.
Entire Agreement. This Agreement contains the entire agreement of SALK and
COMPANY may be changed only by an instrument in writing executed by all Parties.
E.
Headings. The inclusion of headings in this Agreement is for convenience only and shall
not affect the construction or interpretation hereof.
IN WITNESS WHEREOF, COMPANY and SALK have caused this instrument to be executed in duplicate by
their respective duly authorized officers.
COMPANY, INC.
By:
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Title:
Date:
SALK INSTITUTE
By:
Paul Roben, Ph.D.
Title:
Senior Director, Office of
Technology Development
Date:
I acknowledge that I have read this Agreement in its entirety and that I understand my individual
obligations and responsibilities set forth herein:
By: _______________________________________
“Investigator”
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ANNEX 1
Study
Research Plan
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