Information for Researchers
About Technology Transfer & Intellectual Property
The Office of Technology Commercialization & Industry Relations (OTCIR) oversees technology transfer and the management of intellectual property and its protection at Georgia State in partnership between the university and the faculty, staff and students who make the discoveries.
Technology Transfer refers to the process of transferring Intellectual Property (IP) - any innovation or discovery conceived or developed using university resources-from the university to another organization for the purpose of further development and commercialization. The process typically includes:
- Identifying new technologies
- Protecting technologies through patents and copyrights
- Forming development and commercialization strategies such as marketing and licensing to existing private sector companies or creating new startup companies based on the technology
What research investigators need to know
The university has the right to own all IP as defined above. The 1980 Bayh-Dole Act gives universities the right to retain ownership of IP resulting from federally funded research. This right of ownership allows Georgia State to protect your rights to use the IP and to continue to build on your research. Georgia State safeguards not only your rights as the creator, but also safeguards the IP as the university works to bring the IP into public use.
The university does not claim any ownership rights in the area known as “traditional products of scholarly activity.” These work products, developed at the author’s initiative, include journal articles, textbooks, reviews, works of art including musical compositions and traditional course materials. The university considers these items the unrestricted property of the author or originator.
It is the responsibility of each faculty member, staff, postdoctoral fellow and student who develops IP to report it to the Office of Technology Commercialization & Industry Relations (OTCIR) by completing the IP Disclosure Form at http://research.gsu.edu/economic-development/technology-transfer/forms/.
The director of OTCIR determines if a commercialization assessment needs to be conducted. If so, the creator will meet with the director of OTCIR for further commercialization assessment. OTCIR will also determine (1) if the university has a legal interest in the technology, (2) which creators are inventors, and (3) whether Georgia State will pursue the appropriate protection for the technology at this time. Due to the time and substantial expense associated with patent prosecution, Georgia State will take into account the coverage possible along with the commercial market in deciding whether or not to pursue patent prosecution. As a result of the review, not all IP will be patented.
If the university does not pursue appropriate protection and the research was federally funded, the Office of Legal Affairs (OLA) will work with the inventor to have the rights transferred to the inventor by the federal agency that funded the research. If the university does not pursue appropriate protection and the research was sponsored by any other entity, the sponsor typically has the right of first refusal, but the terms of the contract will control its rights. If the university does not pursue appropriate protection and the research leading to the IP was not federally funded and not sponsored, the IP will be released to the inventor.
An inventor is one who conceives either in whole or in part the invention. An invention may have one or more inventors, and each inventor must be listed in the patent application. It is a question of law whether or not an individual is an inventor. Inventorship is strictly based on identifiable contributions to the patentable elements of an invention. Even someone who actively participated in a research project that resulted in an invention might not be a co-inventor for patent purposes. Patent attorneys can only file applications listing individuals who meet the legal requirements for inventors.
A “laboratory” notebook is an important tool that provides a detailed record of a research project, including the exact process by which the IP was developed. The notebook is used for research management and can have important implications for issues ranging from intellectual property management to fraud prevention. A laboratory notebook should be a hardbound book with numbered pages in which no pages have been deleted or added. The cover should have the project name and the start and finish dates for the project. Entries in the notebook should be in ink and deletions should be done with a single line through the deleted material. It is good practice to sign and date the notebook on a daily basis and have someone familiar with the research, but not involved with the research, sign and date the notebook weekly. Electronic lab notebooks may be possible to use, but must meet all requirements for the traditional notebook, and must ensure that it cannot be altered.
When asked if any “publication” has effectively described the invention, most researchers tend to think first of traditional forms of publications such as journal articles. To be on the safe side, however, you should consider most forms of communication – written, verbal or electronic – with any person outside the University to be a publication. Articles, abstracts (which may appear months before the article), electronic postings, student theses and dissertations, student public defenses, poster presentations, PowerPoint presentations, grant proposals and any other uncontrolled dissemination of the information should be considered a publication.
In a university setting, the desire to publish new results (in forums including posters, grants, presentations, abstracts, and electronic media) can limit or negate patent protection. Although U.S. patent law has recently changed to become more like foreign countries, the changes take effect over time. At present, under U.S. law, a patent application may still be filed within one year of the date of any “publication” that effectively describes the invention. Most foreign countries require that a patent application be filed before the date of any publication (unless a U.S. patent application has already been filed). As of March 16, 2013 U.S. patent law provides that any publication by anyone other than you or those working with you will bar a patent. If you have any questions regarding your publication, please contact the OTCIR.
The university licenses its intellectual property to business, industry and university start-up companies. Licensing can happen at the same time as patenting—Georgia State does not need an issued patent to license its IP. Often a Georgia State inventor will form his or her own start-up company and that company will license the IP the inventor generated. A patent may also attract interest from industry or other collaborations leading to additional sponsored research funding.
Material Transfer Agreements (MTAs) are used when a university employee provides biological or chemical materials to anyone outside the university. The Office of Legal Affairs (OLA) negotiates MTAs. You are required to contact the OLA before any tangible research material (chemical or biological) leaves the University. In addition, the OLA reviews MTAs for incoming materials from outside entities.
If you will be collaborating with industry or other entities outside the University on a project, you should first contact the Office of Legal Affairs (OLA) to determine if a Confidential Disclosure Agreement (CDA) should be instituted. CDAs are used when you plan to disclose, but not receive, confidential information, or when both you and an external entity will both disclose and receive confidential information. The OLA will execute CDAs on your behalf and have the external entity receiving the information execute the agreement on its behalf.
The Office of Sponsored Proposals and Awards(OSPA) is authorized by the university to negotiate and legally accept contracts or agreements with businesses or industry external to Georgia State. Responsibility for the management of these contracts or agreements is shared by OSPA and OTCIR.
A patent is a property right granted by the federal government that allows the owner to exclude others from making, using or selling the patented invention for the life of the patent. Patents are authorized by the U.S. Constitution and have a life of 20 years from patent filing.
An invention must meet three criteria in order to be patentable.
1. The invention must be novel (not already invented).
2. The invention must be useful (referred to as utility).
3. The invention must not be obvious.
There are three types of patents that protect many types of inventions.
- Utility (most university inventions are subject to protection by utility patents)
The university first pursues domestic patents, which have a lifespan of 20 years from filing. An international patent may be pursued under certain circumstances, one of which is if a licensee agrees to cover the patent expenses. See the Patent Cooperation Treaty in the International Protection Section of the U.S. Patent & Trademark Office Web Site
Understanding the patent process
The patentability opinion may be prepared by outside patent counsel knowledgeable about your research area. The opinion is based on a prior art search. The patentability opinion is the patent attorney’s expert opinion of whether or not the innovation is patentable and the scope of coverage likely to be available in light of the prior art search.
The provisional patent holds an invention’s “place in line” for one year while a regular patent is pursued. Provisional patents are typically filed when a publication is pending or a potential licensee needs time to do a commercial market assessment.
The patent application contains a detailed description of the background information and “prior art” as well as a complete description of the new invention and how the invention overcomes any problems and disadvantages considered to exist in the prior art. The application contains a number of “claims” that define the scope of the invention.
As the inventor, you will work closely with the outside patent attorney through the OLA to describe the invention fully. Failure to describe the invention fully may cause the application to be rejected or may result in issuance of a patent whose claims fail to provide necessary protection for the invention.
It is important to understand that the patent prosecution process is adversarial in nature and the majority of patent applications are initially rejected. A patent examiner from the U.S. Patent & Trademark Office (USPTO) will examine all claims in the patent application. Written responses are generally necessary to respond fully to positions taken by the examiner. As the inventor, your time, technical knowledge of your work (as well as the field of research) and assistance is absolutely critical in the preparation of each response, as well as the initial filing.
Copyright is a form of protection provided by U.S. law and is automatically established when a work is first fixed in a tangible medium. Registration with the Copyright Office is not required to secure copyright protection. Generally, the copyright owner has exclusive rights to use the copyrighted material, including any derivative uses.
The current copyright law does provide for limited use of copyrighted material under the principle of “fair use” (for purposes such as criticism, comment, news reporting, teaching, scholarship, and research).
Although use of a copyright notice is not required to claim copyright protection, it is desirable to use a notice to put others on notice that the owner does assert copyright protection. The notice should read: Copyright [YEAR WRITTEN] Georgia State University [or name of author(s) if a traditional scholarly work].
Additional information identifying the unit or how to contact the author may also be included if desired immediately below the copyright notice.
Trademark is a word, name symbol or device or combination of these, used by a manufacturer or seller of goods to distinguish products from those of other manufacturers or sellers.
Trade Secret is a plan, process, mechanism, compound or “proprietary information” known only to its owner and to his or her employees to whom it is necessary to confide it.
The university licenses its intellectual property to business, industry and university start-up companies (the university “sells” the intellectual property; it is ultimately state property). Licensing can happen at the same time as patenting—Georgia State does not need an issued patent to license its IP. The OTCIR works with faculty, staff, postdoctoral fellows and student inventors to identify potential licensees. Often a university inventor will form his or her own startup company and that company will license the IP the inventor generated.
After patent costs are recovered, royalty or license income derived from commercialization of GSU intellectual property shall be handled according to the university’s Program Income on Sponsored Projects Policy (link to policy).