Non-Exclusive License and Materials Transfer Agreement

MATERIALS TRANSFER AGREEMENT

This Material Transfer Agreement (“Agreement”) is made between the University of Texas Medical Branch (“UTMB”), a component institution of The University of Texas System (“System”), and (name of company or institution)(“Recipient”)located at(insert department and address).

From the laboratory of (insert name)(“Provider Scientist”), UTMB agrees to provide Recipientwith certain materials for the purpose stated herein under the following conditions:

1. Material and Research. The Material that is covered by this Agreement includes a (insert name of the material)(“Material.”)The Material shall be used by Recipient in research (“Research”), as defined in Attachment A.The Research will be conducted by Recipient under the supervision of (name of laboratory head-- NOT postdoctoralfellow, or graduate student)(“Recipient Scientist”).
2. Use of Material. This Material is made available for internal research use only in laboratory animals or in vitro experiments. The Material is considered proprietary to UTMB. UTMB shall be free, in its sole discretion, to distribute the Material to others and to use it for its own purposes. Except as provided for by this Agreement, Recipient shall not distribute, transfer, or release the Material to any person or entity other than laboratory personnel under Recipient Scientist’s direct supervision, unless written permission is obtained from UTMB. Recipientagrees that all of its Recipient Scientist(s) involved in the Research will have read the terms and conditions of this Agreementand abide by the terms and conditions of this Agreement.
3. Rights. Subject to Section 6. Intellectual Property of this Agreement, Recipient agrees that nothing herein shall be deemed to grant to Recipient or Recipient Scientist any rights under any UTMB patents or any rights to use the Material for any products or processes for any purpose other than performing the Research.If the Recipient intends to use the Material for commercial purposes, then a license for commercial use must be obtained from UTMB. Recipient understands that UTMB shall have no obligation to grant such a license to Recipient, and may grant exclusive or non-exclusive commercial licenses 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.
4. Confidentiality. All Material and information relating to the Material that is disclosed by UTMB to Recipient shall be considered to be confidential, subject to Section 5. Publication of this Agreement. Recipient will use reasonable efforts to prevent the disclosure of UTMB’s confidential information to third parties for a period of three (3) years from receipt, provided that the Recipient party's obligation shall not apply to information that:

a)is already in the Recipient's possession at the time of disclosure;

b) is or later becomes part of the public domain through no fault of the Recipient;

c)is received from a third party having no obligations of confidentiality to UTMB;

d)is independently developed by the Recipient; or

e)is required by law or regulation to be disclosed.

In the event that information is required to be disclosed pursuant to subsection (e), Recipient shall notify the UTMB, in order to allow UTMB to assert whatever exclusions or exemptions may be available to it under such law or regulation.

1. Publication. Recipient will inform UTMBof results of Research, in confidence, related to the Material by providing UTMB with a draft manuscript describing such results. If Recipient’s Scientist desires to publish or present such Research results,then, not less than forty-five (45) days prior to submission to a third-party, Recipient will provide UTMB with a copy of any manuscript or abstract disclosing such Research results for the purpose of protecting the Material and intellectual property of UTMB that might be disclosed by such publication.In any such publication or presentation of Research results, Recipient agrees to acknowledge UTMB scientist as provider of the Material.
2. Intellectual Property. If the Research involving the Material results in an invention or substance that may be commercially useful, SCIENTIST will promptly disclose the invention or substance to RECIPIENT’S Patent Administrator and will notify the Patent Administrator of UTMB’s role as a supplier of the Material used. RECIPIENT, in cooperation with SCIENTIST, will promptly supply UTMB with a copy of the disclosure, in confidence for UTMB’s research and evaluation purposes only. Inventorship and ownership of any invention or substance that may be commercially useful will be determined based on contributions of UTMB and RECIPIENT. RECIPIENT recognizes the property rights of UTMB in the Materials.
3. Warranty. The Material is experimental in nature and it is provided “AS IS” WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR SAFETY OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED. UTMB MAKES NO REPRESENTATION OR WARRANTY THAT THE USE OF THE MATERIAL WILL NOT INFRINGE ANY PATENT OR OTHER PROPRIETARY RIGHT.
4. Liability.In no event shall UTMB be liable for any use by Recipient Scientist or Recipient of the Material or any loss, claim, damage or liability, of whatsoever kind of nature, which may arise from or in connection with Recipient’s breach of this Agreement or Recipient’s use, handling or storage of the Material, unless such loss, claim, damage or liability results from the negligence or willful malfeasance of System, UTMB, their Regents, officers, agents and employees.Recipient agrees to indemnify and hold harmless System, UTMB, their Regents, officers, agents and employees, from any liability, loss or damage they may suffer as a result of claims, demands, costs or judgments against them arising out of the Recipient’s activities to be carried out pursuant to this Agreement and the use by Recipient of the results obtained from Research, excluding claims, loss, or damage that arise from the negligence or willful malfeasance of any Regent, officer, agent or employee of University or System.
5. Compliance.Recipient will use the Material in compliance with all laws, governmental regulations and guidelines applicable to the Material. Moreover, if the Material is used in the United States, then Recipient will comply with current United States NIH guidelines.
6. Export Control.Recipient further agrees that if the U.S. export laws are or become applicable, it will not export any Materialsreceived under this Agreement to any countries for which the United States government requires an export license or other supporting documentation at the time of export or transfer, unless Recipient has obtained prior written authorization from the appropriate authority responsible for such matters.
7. Assignment. This Agreement is not assignable, whether by operation of law or otherwise, without the prior written consent of UTMB.
8. Publicity.Recipient may not use the name of UTMB, System or Board without express written consent, subject to Section 5. Publicationof this Agreement.
9. Term and Termination. This Agreement shall be effective as of the date of the last signature and terminate one (1) year from that date. Upon termination, Recipient will immediately destroy all the Material then in its possession.

THE UNIVERSITY OF TEXAS

MEDICAL BRANCH

Attachment A – Scope of Research

Please write in 500 words or less the Scope of Work
UTMB RECORD OF EXPORT CONTROL REVIEW FORM

For Material Transfer Agreements

Name of UTMB Faculty Member (Providing Scientist):

Date:
Technical Review: (To be completed by the Recipient Scientist)

Please provide complete information of the Receiving Party:

Name:

Address:

US Citizenship/visa status / nationality of the Receiving Party:

State the specific name of material requested (e.g. West Nile Virus). Please clarify if material is a cellular component or the complete organism.

YesNo

Does this material contain infectious biological materials?

Is this material composed only of vaccines and immunotoxins?

Will your receipt and use of this Material involve requests for

information that is not publicly available to be answered by

UTMB Faculty Member?

Will your use of this Material involve research information

or software that could be used in the development of weapons

of mass destruction (nuclear, biological, chemical), or

their delivery systems?

Does this transfer require the delivery of hardware, software,

materials or biological materials to a non U.S. citizen?

By signing below, I certify that I have read this document and completed the appropriate sections to the best of my knowledge and belief:

______

Recipient scientist signatureDate

Please return completed form by fax, scan, or mail to:

Office of Technology Transfer

Galveston, Texas 77555-0926

Fax: (409) 772-0730

If you have questions, contact Matt Grove, J.D.–Office of Technology Transfer, (409) 772-0369, .

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