Patenting & Licensing Process
Protecting the Invention as "Real Property"
As discussed earlier, real property is tangible property that can be given or sold to others. At MCW, research tools are an example. New compounds and formulations, biological research materials such as cell lines, genetic constructs, hybridomas and their antibodies, data sets, and computer software and applications are developed during the normal course of our research programs. When MCW faculty want to share these tools with their colleagues at non-profit institutions for research purposes, the materials should be transferred under a Material Transfer Agreement (MTA).
MTAs are binding legal agreements between the provider of research material and the recipient. The agreement protects the discoverer and the tool by setting forth the conditions of transfer and use, protecting proprietary interest, and restricting distribution. MTAs also require the recipient to indemnify the provider from any liability arising from the use of the material. In consultation with the inventor, the Office of Technology Development (OTD) can charge the recipient institution for the tool a premium for the service. Thus, like patent license agreements, MTAs offer inventors an opportunity to cover the costs of preparing the tool and shipping, and to receive financial reward for their endeavors.