Thinh Nguyen
Science Commons:
Material Transfer Agreement Project
Access to unique research resources, such as biological materials and reagents, is
vital to the success and advancement of science. Many research protocols require
assembling a large and diverse set of materials from many sources. Yet, often the
process of finding and negotiating the transfer of such materials can be difficult
and time-consuming. The ability to locate materials based on their descriptions in
journal articles is often limited by lack of sufficient information about origin and
availability, and there is no standard citation for such materials. In addition, the
process of legal negotiation that may follow can be lengthy and unpredictable. This
can have important implications for science policy, especially when delays or
inability to obtain research materials result in lost time, productivity, and research
opportunities. These transactional barriers for material transfer may ultimately
have more impact on the productivity of basic laboratory science than concerns
related to patents or other intellectual property.1
Science Commons, a project of Creative Commons, is a non-profit initiative
that promotes policy and technology that remove unnecessary legal and technical
barriers to scientific collaboration and innovation. Science Commons’s Material
Transfer Agreement (MTA) Project seeks to reduce unnecessary barriers to the
transfer and reuse of basic research materials and reagents, for both United States
and international scientific collaboration, by proposing a scalable and flexible
infrastructure for searching, negotiation, and tracking.
Creative Commons was founded in 2001 by cyberlaw and intellectual proper-
ty pioneers, including James Boyle, Michael Carroll, Molly Shaffer Van Houweling,
and Lawrence Lessig, MIT computer science professor Hal Abelson, lawyer-
turned-documentary filmmaker-turned-cyberlaw expert Eric Saltzman, renowned
documentary filmmaker Davis Guggenheim, noted Japanese entrepreneur Joi Ito,
and public domain Web publisher Eric Eldred. Inspired by the open source move-
ment, Creative Commons published a set of standardized copyright licenses free
Thinh Nguyen is counsel for Science Commons, where he focuses on initiatives like
the materials transfer project. Formerly, he practiced at a large California law firm
representing biotechnology clients in licensing and collaborative research agreements
and also worked as in-house corporate counsel for a business software company. He
received an A.B. in chemistry from Harvard College (1996) and a J.D. from
Harvard Law School (1999).
© 2007 Thinh Nguyen
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Thinh Nguyen
for public use in order to permit authors and artists flexibly to license their works
for copyright, remixing, and sharing. These licenses have become very popular as
a standard license for Web content, such as photographs on the Web site Flickr,
blogs, Web sites, and multimedia presentations. In addition, they have been adopt-
ed by many open access publishers, such as Public Library of Science, Hindawi, and
Biomed Central, all of which use the Creative Commons Attribution License to
license their publications. Science Commons was founded as a project within
Creative Commons to identify similar opportunities in science for facilitating
exchange, re-use, and collaboration. The Materials Transfer Project arose from the
recommendations of a conference of research funders, university technology
transfer officers, and legal experts organized by Science Commons to explore ways
to remove transactional barriers to research.
MATERIAL TRANSFER AGREEMENT
Material Transfer Agreements (“MTAs”) are contracts that govern the transfer of
tangible research materials from one research institution (the provider) to anoth-
er (the recipient). They are most commonly employed in the transfer of “unique
research resources” such as “cell lines, monoclonal antibodies, reagents, animal
models, growth factors, combinatorial chemistry and DNA libraries, clones and
cloning tools (such as PCR), methods, laboratory equipment and machines.”2
Non-biological and synthetic materials, such as certain nano-materials, chemical
reagents, and chemical substrates may be shared under MTAs as well.
This system for transferring these research tools can give rise to a variety of
transaction costs associated with finding and bargaining for such tools. These
problems are particularly acute where the volume of transactions is high and the
sources of unique research resources required for a given research protocol are
diverse. The resulting delays and failures to agree can impose a significant cost in
terms of lost productivity and research opportunities.3
First, it may be difficult to locate relevant materials, because most of them are
not widely publicized and not searchable on the Web. The traditional method for
a researcher to locate and assemble materials needed for research is to read rele-
vant journal articles in the field of interest, design a suitable research protocol, and
contact the providers referenced, unless the materials are widely known to be avail-
able from a commercial vendor. For materials that are not commercially available,
locating available supplies of materials is potentially time-consuming, because the
provider of the materials may not be identified, may not have sufficient supplies of
the materials, may not be able to produce more at a reasonable cost, may not wish
to share them, or may have moved to a different institution or job.
After a researcher has located the source of the materials, negotiation of the
MTA may present the next hurdle. As the National Institutes of Health’s Principles
and Guidelines state, “each iteration in a negotiation over the terms of a license
agreement or material transfer agreement delays the moment when a research tool
may be put to use in the laboratory.”4 In many circumstances, the materials are
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Science Commons: Material Transfer Agreement Project
subject to non-standard agreements, whose terms are not widely publicized. This
makes it hard to predict whether a request for the materials may be simple or dif-
ficult to negotiate. Sometimes, a particular material may be subject to multiple
MTAs with potentially overlapping or inconsistent terms.
results and
This creates a number of possible factors contributing to delays or failure to
obtain materials, particularly when a research protocol requires materials from
many different sources. If the offered MTA is non-standard, then it must be care-
fully reviewed by a lawyer or specialist trained to understand legal issues and the
institution’s policies and objectives. These objectives can include ensuring rights to
publish, disseminate, and use
research
to
license for commercializa-
tion and avoiding conflicting
obligations. The reviewer
must identify any objection-
able terms and reject them or
offer counter-proposals. In
some cases, the reviewer will
consult with business man-
agers and researchers to clar-
ify essential business objec-
tives. However, this process
can cause significant delays
or failure to reach agree-
frustrating research
ment,
agendas and schedules. 5
Science Commons’s Material
Transfer Agreement (MTA)
Project seeks to reduce
unnecessary barriers to the
transfer and reuse of basic
research materials and reagents,
for both United States and
international scientific
collaboration, by proposing a
scalable and flexible
infrastructure for searching,
negotiation, and tracking.
While these negotiation
practices may be useful in
the context of high-value
transactions with large pay-
offs to the parties, such as
royalty-generating transac-
tions, it is less justified in the context of low financial value transactions like mate-
rial transfer for basic research. Due to constraints in available legal resources, many
technology transfer offices or licensing counsel must prioritize revenue-generating
transactions, and resources to negotiate MTAs are limited. This is one factor that
may contribute to longer turn-around times for negotiating MTAs.
Some researchers avoid negotiation over MTAs through informal sharing.
From an institutional perspective, such practices are unfavorable because they may
subject an institution to legal risks, which might otherwise be mitigated by the use
of MTAs. Such practices may also implicate the intellectual property management
policies of the institution. Finally,
informal sharing favors well-connected
researchers and institutions, and therefore, may create or perpetuate disparities in
opportunities for scientific research.
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Thinh Nguyen
Science Commons proposes to reduce unnecessary transaction costs for shar-
ing research materials by a creating voluntary and scalable infrastructure for rights
representation and contracting represented by use standard agreements, Web-
based metadata, and “human-readable deeds.” These elements arise from design
principles introduced by Creative Commons in creating the Creative Commons
(CC) licenses for copyrighted works, which have created a large and scalable infra-
structure for authors, scientists, artists, and educators to license their works in
standard but flexible ways. This has created a large and thriving community of
users and a commons of copyrighted materials available under CC licenses.
STANDARD CONTRACTS
An important element of the success of “open source” software is the use of stan-
dard licenses such as the Gnu Public License or others of the Open Source
Initiative’s approved licenses, which have provided a legal framework for collabo-
rative software development. Such standard agreements reduce transaction costs
by reducing negotiation costs within the communities that routinely use them and
can facilitate regimes of frictionless exchange and re-use. Similarly, the CC licens-
es provide a framework for the copying, re-mix, and distribution of artistic works
and other content.
One of the most prominent and successful efforts to standardize biological
material transfers in the United States is the Uniform Biological Material Transfer
Agreement (UBMTA), which was developed by the National Institutes of Health
(NIH) in collaboration with research institutions and adopted by 320 signatories.6
Institutions may sign and deposit a master UBMTA with The Association of
University Technology Managers (AUTM) in order to be able to complete transac-
tions by executing a short “implementing letter” or cover letter. A similar, shorter
standard form called the Simple Letter Agreement (SLA) for non-profit use is pub-
lished by NIH, which recommends its use in connection with NIH sponsored
research.7 However, use of such standards for intra-academic transfers is not uni-
versal, as signatories can opt to use them on a case-by-case basis, and some insti-
tutions may include in these MTAs additional modifications that would render
them non-standard, and thus subject to individualized review and negotiation.
A further complication is that the UBMTA and SLA are not compatible with
use by for-profit entities. This is because the UBMTA and SLA prohibit transfer to
for-profit entities and restrict use to academic research. The lack of generally
accepted standards for these transfers makes collaboration between academic and
for-profit researchers complex and costly, even when only internal or evaluation
use is contemplated.
The Science Commons MTA Project adopts a two-tiered strategy to reduce
transactional barriers to exchanging materials for research. First, for intra-academ-
ic material transfer, we adhere to the NIH Principles and Guidelines for Recipients
of NIH Research Grants and Contracts On Obtaining and Disseminating
Biomedical Research Resources (“NIH Principles and Guidelines”) in calling for
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Science Commons: Material Transfer Agreement Project
more widespread adoption and use of UBMTA or SLA in unmodified form. To
provide incentives to adhere to these standards, we will provide tools and infra-
structure to facilitate listing, searching, contracting, and tracking downstream
impact for providers and recipients who are willing to take advantage of these
existing standard MTAs. These capabilities rely on an extension of the same meta-
data framework that has made content under the Creative Commons licenses
widely available for Web-based sharing, and we are adapting such metadata and
software to work with the UBMTA and SLA.
The NIH Principles and Guidelines also encourage institutions to “simplify the
transfer of materials developed with NIH funds to for-profit institutions for inter-
nal use by those institutions.”8 These guidelines recognize that while greater flexi-
bility is required in this area, the same principles apply to considerations for inter-
nal use by for-profit entities. Science Commons, working with collaborators, has
developed a set of new MTAs that use modular contract options to promote the
development and evolution of standard MTAs for transfers between academia and
industry. The new MTAs published by Science Commons will provide for a more
flexible range of options, while at the same time adhering to the core guidelines
articulated by the NIH Principles and Guidelines. For example, they distinguish
between activities for internal use and commercialization, and they do not provide
options that restrict publication or that contain reach-through royalties, grant
backs, commercialization options, or other obligations with regard to downstream
inventions made by the recipient. We are also developing a simple interface that
can guide a user through key considerations and options associated with selecting
a particular MTA.
STANDARD RIGHTS DESCRIPTION FRAMEWORK
The use of semantic web metadata to identify rights associated with copyrighted
works has contributed to powerful searching and filtering capabilities for Web-
based works available under Creative Commons licenses. These metadata use the
Resource Description Framework (RDF), a robust Web-based representation lan-
guage for Universal Resource Identifiers (URIs) published by W3C.9 This open
framework allows physical resources in the world (such as unique research mate-
rials) to be represented in a machine-readable form that is designed to be compat-
ible across a variety of software and operating system platforms. For example,
more than 140 Million objects on the Web are tagged with Creative Commons
licenses, and they can be found by using advanced search options available from
search sites such as Yahoo! and Google. This has demonstrated considerable poten-
tial to create a scalable, low-cost infrastructure for describing resources and asso-
ciated rights and permissions.
Science Commons will use a similar framework to describe unique research
materials and the MTAs under which they are offered. Each material that is listed
on the Web and available under a standard MTA can be associated or “tagged” with
metadata, which allows for similarly powerful searching and filtering capabilities
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Thinh Nguyen
by software and search engines. For example, an academic researcher might be able
to search for all available animal models for neurobiological research that are avail-
able under the UBMTA or SLA, and her counterpart at a for-profit laboratory can
search for similar materials that might be offered under a standard Science
Commons MTA. This will permit researchers to plan research protocols with
greater visibility into the likelihood that unique research resources will be available
quickly or whether more extended negotiations will be required.
The association of this metadata with scientific articles may raise exciting new
possibilities. For example, authors can supply a unique link from materials
described in the “materials and methods” section of a scientific article to the host-
ing material depository where they can be found and ordered. Then, a researcher
referencing such a link can use the supplied metadata to identify and filter accept-
able MTA offers and then order online if possible. The widespread use of such a
system may eliminate much of the detective work currently involved in tracking
down materials and enable greater automation of ordering and fulfillment.
The association with materials with the literature using metadata can also per-
mit the research impact of materials to be tracked and analyzed by software, giv-
ing researchers and funding institutions additional measures of scientific impact.
Creative Commons has demonstrated this capability with its CCMixter software,
which allows metadata to be used to track and analyze downstream impact of cre-
ative works, such as remixes and other derivative works originating from a given
work.10 In the materials context, this may permit the impact of research to be eval-
uated not only in terms of journal citations but also the frequency of re-use of
unique research materials generated by that laboratory.
In addition to metadata, Science Commons is developing “human readable
deeds” for each standard MTA. These deeds and asscociated metadata will be host-
ed at unique Web Uniform Resource Identifier (URIs) to which users and software
applications can link. Each, in turn, provides links to the relevant legal text and
associated metadata for that MTA. Each deed describes a unique standard agree-
ment in summary terms, as intended to be understood by non-legal audiences,
including basic iconography that will enable researchers to identify at a glance the
most relevant rights and obligations associated with a material. These can also be
printed out and attached to materials to describe relevant MTA limitations, simi-
lar to the way that Material Data Sheets summarize salient physical and chemical
properties of materials.
Together, these elements create the basic outlines of an infrastructure for
enabling Web-based transactions in materials. Web-based transactions have revo-
lutionized e-Commerce, as evidenced by sites like Amazon.com and Ebay. Yet, so
far, we have seen little evidence that these models are being adapted with nearly
that level of success for solving material transfer problems. We believe that such
success requires significant standardization of policies, contracts, and technology.
The elements of our MTA project will offers nucleating agents around which such
efforts can grow and evolve. We are also collaborating with the iBridge Network, a
project of the Kauffman Innovation Network dedicated to creating a Web-based
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Science Commons: Material Transfer Agreement Project
clearinghouse of research tools and materials, [need to describe iBridge for non-
specialists through footnote or briefly in text] to deploy the initial prototype of this
MTA system. This will provide us with an opportunity to conduct a beta test of our
software and tools and obtain feedback from key stakeholders.
Reducing the time it takes for scientists to obtain basic research materials is
vital for accelerating scientific discovery. Standardization of policy, contracts, and
technology is necessary in order to deliver the relatively frictionless transaction
systems that have revolutionized Web commerce. The system that we propose,
which includes greater use of standard contracts, a Web-based rights description
framework, and other educational tools, is the first step in that direction. The pos-
sible benefits will accrue not only to immediate stakeholders, in the form of cost
savings and increased productivity, but ultimately to society as a whole from
greater innovation and scientific progress.
1. Walsh, John P., Charlene Cho, and Wesley M. Cohen. “View from the Bench: Patents and Material
Transfers.” Science 23 (2005): 2002-2003.
2. “Principles and Guidelines for Recipients Of NIH Research Grants And Contracts On Obtaining
And Disseminating Biomedical Research Resources, Final Notice.” Federal Register 64 (25 May
1999): 28205-28209.
3. Campbell, Eric G., et. al. “Data Withholding Academic Genetics.” JAMA 287 (2002): 473-480.
4. Principles and Guidelines 28206.
5. Streitz, Wendy P. and Alan B. Bennett. “Material Transfer Agreements: A University Perspective.”
Plant Physiology 133 (2003): 10-13.
6. AUTM.
Signatories
to
the March
8,
1995, Master UBMTA Agreement.
http://www.autm.net/aboutTT/aboutTT_umbtaSigs.cfm (last visited April 10, 2007).
7. Office of Technology Transfer. National Institutes of Health. “Simple Letter Agreement for the
Transfer of Materials.” Available at http://ott.od.nih.gov/ (last visited April 15, 2007).
8. Principles and Guidelines 28206.
9. Shadbolt, Nigel, Tim Berners-Lee, and Wendy Hall. “The Semantic Web Revisited.” IEEE
Intelligent Systems 21 (2006): 96-101.
10. Creative Commons. ccMixter.
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