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 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.
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 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.
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.