Material Transfer Agreement for Biological Material

Material Transfer Agreement for Biological Material

Research Foundation of The City University of New York on behalf of The City University of New York

Material Transfer Agreement for Biological Material

For Academic and Non-Profit Entities

This Agreement is between the Research Foundation of The City University of New York representing The City University of New York (collectively "CUNY"), and______(“Institution”), on behalf ofits employee, ______(“Recipient Scientist”) for Material which may be provided under the terms of this Agreement fromthe laboratory of (“CUNY Provider Scientist”).

  1. Definition
  2. Material: The Original Material listed inExhibit A attached herewith, and any Progeny and/or Unmodified Derivatives. CUNY retains ownership of the Material.

1.2Progeny: Unmodified descendant fromthe Original Material, such as virus fromvirus, cell fromcell, or organismfromorganism.

1.3Unmodified Derivatives: Substances created by the Recipient Scientist or Institution which constitute an unmodified functional subunit or product expressed by the Original Material. Some examples include: subclones of unmodified cell lines, purified or fractionated subsets of the Original Material, proteins expressed by DNA/RNA supplied by CUNY, or monoclonal antibodies secretedby a hybridoma cell line.

1.4Modifications: Substancescreated by the Recipient Scientist or Institution which contain/incorporate any formof the Material (Original Material, Progeny or Unmodified Derivatives). Modifications include, but are not limited to, Cross-Bred Progeny. While CUNY does not claimsole ownership of Modifications, CUNY does retain ownership of any portion of Material containedwithinsuchModification.

  1. Institution agrees to use the Material solely for application in the research of the Recipient Scientist to be carried out exclusively at the Institution and described intheattachedExhibit B (“Research”). The Material and/or Modifications will not be subject tothe terms of any consulting, option, license, sponsored research, material transfer, or any other agreement notidentified in Exhibit B in which a third party(other than the US government) obtains rights to intellectualpropertyarisingfromtheResearch without the express, prior written approval of CUNY.
  1. The Material and/or Modifications will not be used in human subjects (including for diagnostic purposes) or in animals intended for use as food by humans or animals. Institution agrees to use the Material and/or Modificationsin compliance with all applicable statutes and regulations, including Public Health Service and National Institutes ofHealth regulations and guidelines such as those relating to research involving the use of animalsorrecombinant DNA.
  1. For Material comprising animals only: Institution is granted the right to breed the Material for the purpose of performing the Research. Institution may cross-breed the Material, but only to animals solely owned by Institution.
  1. The Material and Modifications will not be distributed by theRecipient Scientist or Institution to any other person or organization, except those scientists affiliated with and working within the Institution under the supervision of Recipient Scientist who have also accepted the terms of this Agreement. Institution and Recipient Scientist agrees to refer to CUNY any request for the Material fromanyoneother than those persons working under the Recipient Scientist's direct supervision. To the extent supplies are available, CUNY agrees to make the Material available, under a separate implementing letter to this Agreement or other agreement having terms consistent with the terms ofthis Agreement, to other scientists (at least those at nonprofit organizations who wish to replicate the Recipient Scientist 's research); provided that such other scientists reimburse CUNY and/orCUNYProvider Scientist for any costs relating to the preparation and distribution of the Material. Notwithstanding the above, Recipient Scientist may distributeModifications following publication and upon request, to scientists at nonprofit organizations for academic research and/or teaching purposes, pursuant toan agreement having terms consistent with the terms of this Agreement.
  1. Should unauthorized persons or organizations obtain this Material, the Recipient Scientist and Institution agree to advise CUNY immediately and to takesuch reasonable steps and to assist CUNY in taking such steps as may be reasonably necessary to recover possession of the Material (but only to the extent that such steps do not require the inappropriate use of public funds).
  1. All Material and information relating tothe Material and disclosed by CUNY shall be considered to be confidential. The obligation ofconfidentiality shall not apply to Material or information that:

a. were already known to Recipient Scientist or Institution prior to the time of first disclosure, as demonstrated by competent written documentation; or

b. at the time of disclosure are in the public domain; or

c. after the date ofthe disclosure, lawfullybecome a part of the public domain other than through breach of this Agreement by Recipient Scientist or Institution; or

d. are received without any obligation ofconfidentiality froma third party having a legal right to disclose the same; or

e. are independently developed by Institution by individuals without access to such information, as demonstrated by competent written documentation; or

f.are required to be disclosed by Recipient Scientist or Institution pursuant to a legally enforceable order, direction or other regulation (“Order”); provided however, that Recipient Scientist orInstitution promptly notifies CUNY in advance of such disclosure and discloses only that information necessary tocomply with said Order.

  1. Recipient Scientist and Institution’s obligation ofconfidentiality as set forth in paragraph 7 herein shall terminate five (5) years fromthe date ofthe last signature to this Agreement.
  1. Except as expressly provided in this Agreement, no rights are providedtoInstitutionunder any patent applications, trade secrets or other proprietary rights of CUNY. In particular, no rights are provided to use the Material and/orModificationsfor profit-making, revenue- generating, or commercial purposes, such to performcontract research, to screen compound libraries, to produce or manufacture products for general sale, or to conduct research activities that result in any sale, lease,license, or transfer ofthe Material and/or Modifications to a for-profit organization.
  1. If Institution desires to use or license the Material or a Modification for profit-making, revenue-generating, or any other commercial purposes, Institutionagrees, in advance of such use, to negotiate in good faith with CUNY to establish the terms ofa commercial license. Itis understood by Institution that CUNY shall have no obligation to grant such a license to Institution, and may grant exclusive or non-exclusive commerciallicenses to others, or sell or assign all or part of the rights in the Material to any third party(ies), subject to any pre- existing rights held by others and obligations to the Federal Government.
  1. Recipient Scientist agrees notto publicly disclose the resultsof the Research using the Material and/or Modifications toany third party, company orany investigator, or publish any data or information relating to the Material and/or Modifications or studies conducted with it, prior to disclosure in writing to CUNY.Recipient Scientist will informCUNYProvider Scientist of the results of the Researchby personal written communication. Recipient Scientist and Institution agreeto provide CUNY’s Technology Commercialization Office and CUNY Provider Scientist with acopy of all manuscripts or abstracts reporting such resultsnot less thanthirty (30) daysprior to submission thereofto publisher, for CUNY’s reviewand comment. If CUNY determines that the proposed publication or presentation contains an Invention (as defined in paragraph 12 herein) to which CUNY is co-owner and for which CUNY desires patent protection, thenInstitution will delay publication orpresentation for up to an additional forty-five (45) days to permit the filing of patent applications. Recipient Scientist agrees to acknowledge the source of the Material and/or Modification in all publications and presentations based on the use of the Material and/or Modifications.Recipient Scientist agrees to offer to include CUNY Provider Scientist as a co-author on all publications based upon the levelof CUNY Provider Scientist input in any such publication and in such case CUNY Provider Scientist shall be afforded the opportunity of review and edit of the associated manuscript and revisionsthereof prior to submission. This Agreement shall not be interpreted to prevent or delay publication of results of research using Material and/or Modifications.
  1. “Inventions” include new usesof the Material and/or Modifications and products containing the Material and/or Modifications, whether or not patentable. Institution agrees to promptly disclose all Inventions to CUNYin confidence. Any patentapplication filed based on the Material and/or Modifications or use thereof shall recognize Inventorship of CUNY Provider Scientist as such Inventorship shall be determined in accordancewith U.S. patent law, or by mutual agreement between the parties, taking into account the role and contributions of the parties to the Invention.Ownership shall follow Inventorship, absent agreement to the contrary. The parties agree to negotiate aninter-institutional agreement which shall include terms regarding the equitable sharing of patent costs, licensing income, and invention managementresponsibility based on the respective parties’ contributions to each Joint Invention. If either Institutionor CUNY is the sole inventor of any Invention, that party shall be free to dispose of such Sole Invention asit deems appropriate. CUNY will have the rightto use for academic research and teaching purposes all Inventions developed by Institution under this Agreement without payment of licenseor royalty fees. Upon CUNY’s request and subject to availability, Recipient willprovide CUNY with reasonable amounts of Modifications for use inacademic research and teaching.
  1. This Material is experimental in nature and its characteristics are not completely known. The Recipient Scientist and the Institution agree to use special care in the use, storage, handling, and disposal of this Material commensurate with guidelines published by the National Institutes of Health.
  1. THIS MATERIAL IS PROVIDED“AS IS” AND WITHOUT ANY WARRANTY EXPRESS OR IMPLIED, INCLUDING ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR THAT THE USE OF THE MATERIAL AND/OR MODIFICATIONS WILL NOT INFRINGE OR VIOLATE ANY PATENT OR OTHER INTELLECTUAL PROPERTY RIGHTS OF ANY THIRD PARTY OR THAT THE MATERIALS AND/ORMODIFICATIONS WILL NOT POSE A HEALTH OR SAFETY RISK. NEITHER CUNY NOR CUNY PROVIDER SCIENTIST SHALL BE LIABLE FOR ANYUSE OF THE MATERIAL BY THE INSTITUTION, OR FOR ANY LOSS, CLAIM, DAMAGE, OR LIABILITY OF ANY KIND OR NATURE, WHICH MAY ARISE FROM OR IN CONNECTION WITH THIS AGREEMENT OR FROM THEUSE, HANDLING, ORSTORAGE OF THE MATERIAL AND/OR MODIFICATIONS.
  1. The Institution represents that they are entitledto receive this Material and to agree to the obligations imposed by this Agreement, under all applicable laws and regulations.To the full extent allowed by law, the Recipient Scientist and the Institution agree to waive all claims against CUNY.

ForStateInstitutions: TheInstitutionagreesto beresponsibleforanyclaims,costs,damages, or expenses resulting from any injury (including death), damage, or loss that may arise from the use, storage, handling and disposal of the Material or any byproduct or derivative by the Recipient Scientist and/or the Institution and its employees, tothe extent permitted under the laws of the state.

For US Government Institutions: The Institution assumes the liability for any claims, damages, injury, or expenses arising fromthe use, storage, handling and disposal of the Material or any byproduct or derivative by the Recipient Scientist and/or the Institution and its employees, but only to the extent provided under the Federal Tort Claims Act (28 U.S.C. Chapter 171).

For All Other Institutions: Institutionagreesto defend and indemnify CUNY from all claims and damages asserted by third parties arising from the use, storage, handling and disposal of the Material or any byproduct or derivative bythe Recipient Scientistand/or the Institution and its employees, except those claims anddamages arising directly fromthe gross negligence or willful misconduct of CUNY.

  1. Unless extended in writing by the parties, this Agreement shall terminate upon earlier of:

completion of the Research, or b) two (2) years fromthe date ofthe last signature tothis Agreement. Upon termination, Institution will discontinue itsuse of the Material andwill return or dispose of all Material as directedby CUNY. Institution, atitsdiscretion, will also either destroy all Modifications or remainbound by the termsof this Agreement as they apply to Modifications. This Agreement shall terminate automatically upon any use oftheMaterial by Recipient Scientist and/or Institution in violation ofthe terms hereof. Upon such termination, Recipient Scientist and/or Institutionshall return or dispose of all Material and Modifications as directed by CUNY.

  1. (Optional)Transmittal Fee to reimburse Provider Scientist for the preparation and distribution costs:$0.00 .

Payment of the above Transmittal Fee is not tobe considered a sale of Material by CUNY or Provider Scientist and no other rightor license is granted or implied as a result of the transfer of Material to Recipient Scientist and Institution.

  1. This Agreement may be executed in one or more counterparts by the Parties by signature of a person having authority to bind the Party, which may be by facsimile signature, each ofwhich when executed and delivered, by facsimiletransmission or by mail delivery, will be an original and all ofwhich will constitutebut one and the same Agreement.

SIGNATURE PAGE FOLLOWS

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The undersigned agree to the foregoing:

For the Institution

Signature Printed name: Title:

Date:

While not a party to this Agreement, I acknowledge that I have read this Agreement and understand my obligations as an Institution employee:

Recipient Scientist

Signature Printed name: Title:

Date:

The Research Foundation of The City University of NewYork

Signature Printed name: Title:

Date:

Attachments:Exhibit A – Description of Material Exhibit B –Descriptionof Research Shipping Information Form

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Exhibit A

Original Material:

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Exhibit B

Research description:

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Shipping Information Form

To CUNY Provider Scientist: Receipt by you of a fully-signed copy of the Material Transfer Agreement constitutes authorization to ship the Material(s).

To Recipient Scientist and Institution: In the space below, please indicate how you would like the Material to be sent.

ShippingAddress: Attention: TelephoneNo.:

E-Mail:

ShippingCarrier: AccountNumber:

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