ACADEMIC BIOLOGICAL MATERIAL TRANSFER AGREEMENT

 

This agreement in entered into as of the effective date by and between:

 

Name: ________________________________

Tel: _____________ Fax: _____________

Address: __________________________

(hereinafter the "Provider")

 

By: Mrs./Ms. _________________

(hereinafter the "Provider Scientist")

 

 

AND

 

Name: ________________________________

Tel: _____________ Fax: _____________

Address: __________________________

(hereinafter the "Recipient")

 

 

By: Mrs./Ms. _________________

(hereinafter the "Recipient Scientist")

 

 

1.   DEFINITIONS

 

 

a.   Material: all Original Material, Progeny and Unmodified Derivatives and not including any Modifications or other substances created by Recipient through the use of the Material which are not Progeny or Unmodified Derivatives.

 

i.    Original Material: the Material described as Original Material above

 

ii.   Progeny: Unmodified descendant from the Material, such as virus from virus, cell from cell, or organism from organism.

 

iii.   Unmodified Derivatives: Substances created by Recipient, which constitute an unmodified functional or structural subunit or product expressed by the Original Material or derived from Progeny. Some examples include: subclones of unmodified cell lines, purified or fractionated subsets of the Original Material, proteins expressed by DNA/RNA, , monoclonal antibodies secreted by a hybridoma cell line, or sub-sets of the Original Material such as plasmids.

 

b.   Modifications: substances created by Recipient which contain/incorporate the Material.

 

c.   Commercial Purposes: the sale, lease, license, or other transfer of the Material and/or Modifications to a for-profit organization and includes any use of the Material and/or Modifications by any organization, including Recipient, to perform contract 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 of the Material and/or Modifications to a for-profit organization or any activity otherwise for the purposes of commercial exploitation. However, industrially sponsored academic research will not be considered a use

of the Material and/or Modifications for Commercial Purposes per se, unless any of the above conditions of this definition are met.

 

2.   PERMITTED USES & USERS OF MATERIAL

 

Recipient and Recipient Scientist:

 

a.   May only use the Material for academic research purposes as part of the Recipient’s Research Project;

b.   May use the Material only at Recipient’s organization and only in Recipient Scientist’s laboratory under the direction of Recipient Scientist or others working under his/her direct supervision and control;

c.   Must not use the Material in human subjects, in clinical trials or for diagnostic purposes involving human subjects without the prior written consent of Provider and confirmation of all regulatory and ethics

approvals;

d.   May use the Material for analysis purposes only and must not undertake, directly or indirectly, any efforts to duplicate or reverse engineer the Material; and

e.   Must not transfer the Material to anyone else within Recipient’s organization not under Recipient Scientist’s supervision or control or to any third party without the prior written consent of Provider.

 

 

3.   COMMERCIAL USE

 

If Recipient wishes to use or license the Material or Modifications for Commercial Purposes, Recipient must obtain a commercial license from Provider and any other party having rights to benefit from the use of the Material for

Commercial Purposes. Recipient acknowledges that Provider has no obligation to grant such license to Recipient. Provider is free to grant exclusive or non-exclusive licenses to others 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 any obligations to government

agencies.

 

4.   THIRD PARTY REQUESTS FOR MATERIAL

 

Recipient must refer to Provider any request for the Material from anyone other than those working under Recipient

Scientist’s direct supervision and control.

 

5.   COST & DELIVERY OF MATERIAL

 

The Material is provided at no cost, but Recipient must pre-pay for all delivery charges by providing its billing account information for shipping purposes to Provider. Provider will send the Material to Recipient upon receipt of a signed copy of this Agreement from Recipient and billing account information for shipping purposes.

 

6.   OWNERSHIP

 

Provider owns, or has the right to provide to Recipient, the Material, including any Material contained within or incorporated into any Modifications.  Modifications or other substances created by Recipient or in collaboration with

Provider shall be owned solely or jointly as dictated by inventorship, in which case both parties will negotiate in

good faith to enter into ownership and benefit sharing arrangements as appropriate.

 

7.   NO LICENSE TO PROPRIETARY RIGHTS

 

Recipient acknowledges that the Material is or may be the subject of a patent application, plant breeders’ rights or other forms of proprietary rights. Except as provided in this Agreement, no express or implied licenses or other

rights are provided to Recipient in respect of such rights, including any altered forms of the Material made by

Provider.

 

8.   NEW INTELLECTUAL PROPERTY

 

If Recipient Scientist’s use of the Material results in an invention or substance which he/she discloses to Recipient for commercialization purposes (‘New Intellectual Property’), Recipient will also promptly disclose the invention or

substance to Provider at University of Guelph, Business Development Office, Attention: Director and notify Provider of the role of the Material, Provider Scientist and any other person affiliated with Provider in the creation of the New

Intellectual Property. Provider will keep confidential any information provided by Recipient relating to the New

Intellectual Property.  Recipient grants to Provider  a non-exclusive, non-transferable, perpetual, royalty-free license to use the New Intellectual Property for teaching and academic research purposes.

 

9.   PUBLICATION

 

This Agreement does not prevent or delay publication of research findings resulting from use of the Material provided that Recipient does not include in any oral presentation or written publication any information identified

as confidential by Provider without the prior written consent of Provider. Recipient must provide appropriate acknowledgement of Provider and Provider Scientist in any publication and must forward a pre-print copy of the

publication to Provider’s Scientist.

 

10. WARRANTIES

 

Provider makes no representation or warranty of any kind, expressed or implied, with respect to the Material, including but not limited to any representation or warranty with respect to the utility, efficacy, non-toxicity, safety,

merchantability, title, or fitness for a particular purpose, that the use of the Material will not infringe any patent,

copyright or other proprietary rights of a third party or that there is no third party which might also have rights to benefit from the use of the Material for Commercial Purposes.

 

11. ASSUMPTION OF RISK

 

Recipient acknowledges that the Material is experimental in nature, that all of its characteristics, as well as hazards associated with its use, may not be known. Recipient assumes all risk and responsibility for the use, storage or

disposal of the Material as well as the risks of transport, loss or damage to or by the Material upon the Material leaving the custody and premises of Provider.

 

12. LIMITATION OF LIABILITY & INDEMNITY

 

Recipient assumes all lia bility for loss o r dama ges a rising from the use, storage or disposal of the Mate rial and further agrees to indemnify, defend and hold harmless Provider and its officers, directors and employees from all

claims, actio ns a nd d amages whatso ever, incl uding legal  fees, re sulting fro m or in   connection with t he u se, storage o r di sposal of the Material, except in sofar as su ch clai ms re sult di rectly from the gro ss negli gence o r

wilful miscon duct of the   Provider. In no circum      stances will  Provider b   e liable for any speci     al, direct,

consequential, incide ntal or any oth  er damag es suffered by  Recipient or  any others re sulting from t he u se, storage or disposal of the  Materi al, an d Modifi cation or  any pro duct derive d from  use of  the Material o r any modification.

 

 

13. TERM & TERMINATION

 

This Agreement will terminate on the earliest of the following dates:

a.   when the Material becomes generally and unconditionally available from third parties, for example, though reagent catalogues or public depositories;

b.   on completion of Recipient's Research Project;

c.   on thirty (30) days written notice by either party to the other;

d.   if Recipient materially breaches the Agreement, immediately upon written notice from Provider to Recipient of Recipient’s breach of this Agreement; or

e.   five years after the Effective Date.

 

Other than termination for causes such as an imminent health risk, alleged patent infringement or breach of this agreement by Recipient, upon request from Recipient, Provider may defer the effective date of termination for a period of up to one year, to permit completion of research in progress. Upon the effective date of termination, or if requested, the deferred effective date of termination, Recipient will discontinue its use of the Material and will, upon direction of Provider, return or destroy any remaining Material.

 

14. GENERAL PROVISIONS

 

14.1  Notices - All notices given under this Agreement must be in writing and delivered by courier or registered mail, return receipt requested, or facsimile, to the address of the party set out on page one of this Agreement. All notices to the Provider must be addressed as provided above. Notices will be deemed to

have been received on the date of delivery, if delivered by courier, on the fifth business day following receipt, if delivered by registered mail or on the first business day following the electronic confirmation of the successful transmission of the facsimile, if sent by facsimile.

 

14.2  Remedies/No Waiver - Provider will be entitled to seek a temporary or permanent injunction or any other form of equitable relief to enforce the obligations contained in this Agreement. Failure of a party to enforce its rights on one occasion will not result in a waiver of those rights on any other occasion.

 

14.3  Assignment - Neither party may assign any of its rights or obligations under this Agreement without the prior written consent of the other party.

 

14.4  Regulatory compliance – Each party must comply with all applicable laws, regulations and rules in its jurisdiction, including but not limited to those relating to those involving the use of animals or recombinant DNA.

 

14.5  Entire Agreement/Severability - This Agreement represents the entire agreement between the parties with regard to the Material and supersedes any previous understandings, commitments or agreements, whether written or oral. If any provision of this Agreement is wholly or partially unenforceable for any reason, all other provisions will continue in full force and effect.

 

14.6  Survival - The obligations contained in clauses 6, 7, 10, 11 and 12 will survive termination of this agreement.

 

14.7  Authority to Bind/Execution – Each Party represents that it is permitted to enter into this Agreement, to consent to its conditions and that each has authority to sign this Agreement. This Agreement may be executed in one or more counterparts, each of which will be deemed an original, but all of which will constitute one and the same instrument. If delivered by facsimile, the party must also send promptly and without delay an executed original by courier to the other party. This Agreement may also be created as an electronic document and executed by electronic signature.