WASHINGTON _ A new biological material transfer agreementthat likely will be adopted by major biomedical research institutionsaround the country will speed the transfer of technology betweennon-profit and public institutions, according to experts.

The National Institutes of Health (NIH) published the language of theagreement, called the uniform biological materials transfer agreement(UBMTA) in the Federal Register on March 8. The UBMTAprogram will be administered by the Association of UniversityTechnology Managers (AUTM). AUTM has 1,400 members, abouthalf of which are universities and half of which are corporations andlaw firms.

"This is a major accomplishment for the technology transfercommunity," Reid Adler, a partner in the Washington office ofMorrison & Foerster and former director of the NIH's Office ofTechnology Transfer, told BioWorld. "The agreement sets a defaultthat facilitates the exchange of materials in the biomedical researchcommunity, as well as setting priorities for technology transfermanagers."

Although participation in the UBMTA program will be strictlyvoluntary, several major institutions have already expressed theirintent to sign on. Under UBMTA, exchange of biological materialsbetween researchers can take place after a simple letter is signed,assuming both the providing and receiving institutions are UBMTAparticipants. Currently, such exchanges are negotiated separately.

Those case-by-case negotiations waste time, according to MarvinGuthrie, vice president for patents, licenses and industry-sponsoredresearch at Massachusetts General Hospital in Boston. "Materialtransfer agreements slow down research and get in the way ofscientific progress," Guthrie told BioWorld, noting that his hospitalnegotiates more than 700 such agreements each year. "Most of thetime, nothing commercially valuable comes out of the research sopeople are wasting time protecting interests that don't needprotecting."

Adler agrees. He said non-profit technology transfer programs shouldfocus on three things: educating scientists about patents and licenses,conducting scientific matchmaking between research collaboratorsand marketing inventions to industry. They should not, he said, getcaught up in a "negotiation frenzy" because of misplaced fears aboutmissing potentially lucrative deals.

"The bulk of researchers in the biomedical field work for non-profitinstitutions or the NIH and, for them, this [the UBMTA] will greatlyexpedite the exchange of materials," said Adler.

Biological material transfer agreements are important because theyrequire the recipients of unique compounds to exercise care in thehandling of materials, to maintain control over the distribution ofmaterials and to acknowledge providers in scientific publications. Inaddition, they may restrict the product rights of both recipients andproviders in the rare cases where a commercially valuable inventiondoes arise out of the research.

Industry Probably Won't Adopt Agreement

Experts said that the UBMTA, designed solely for the use of non-profit and public institutions, probably won't be adopted by industrybecause it significantly limits the rights, called "reach-through"rights, of providers whose materials are modified and then becomecommercial products.

However, inasmuch as the UBMTA sets standards and definitions inthe field of technology transfer, it could change the rules of the gamefor companies negotiating material transfer agreements withuniversities or research institutions. "We hope that it will become agold standard in the field," explained Sandra Shotwell, director of theOffice of Technology Management at Oregon Health SciencesUniversity in Portland.

Shotwell said that the UBMTA "draws a line in the sand" with itsvarious definitions of what constitutes a modification of a materialand "who owns what" when such a modification occurs. As a result,the ownership rights of both providers and recipients of researchmaterials will be more clearly defined than ever before.

"Widespread adoption of these definitions would begin to influencenegotiations with companies," predicted Shotwell, who, alongsideAdler, helped spearhead development of the UBMTA when sheserved as chief of technology licensing at the NIH in 1990. Sheadded that major universities, such as the Massachusetts Institute ofTechnology, Stanford University, Harvard University and theUniversity of California system, plan to participate in the UBMTAprogram.

In addition, she said that the Chevy Chase, Md.-based HowardHughes Medical Institute, which funds approximately 270investigators at 64 host institutions nationwide, is consideringadopting the UBMTA.

Dacia Clayton, an attorney in the Boston office of the Ropes & Graylaw firm, told BioWorld that a standard agreement for university-industry material transfers has been on the drawing board for severalyears. But she was skeptical of the prospects for a private sectorversion of the UBMTA.

"It is going to be difficult for industry to reach a consensus on thisissue," said Clayton. "Generally speaking, companies want to retainthe ability to craft their own agreements." That's especially true formaterials which companies have invested in heavily or whichrepresent their lead technology. For such compounds, industry mustconsider the rights of public shareholders. n

-- Lisa Piercey Washington Editor

(c) 1997 American Health Consultants. All rights reserved.

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