Intellectual Property

Georgia State University Policy on Intellectual Property

This policy addresses both individual and university intellectual property rights, and applies to all persons creating intellectual property at Georgia State University. The policy applies to students and all university employees, including but not limited to, faculty and staff. The policy also extends to persons receiving compensation or funding from the university, or funds administered by the university.

Other important policies that should be reviewed include:

  • Georgia State Individual Conflict of Commitment & Conflict of Interest Policy
  • Georgia State Financial Disclosures in Sponsored Instruction, Research or Service Activities Policy
  • Board of Regents Intellectual Property Policy, Section 6.3
  • Board of Regents Policy on Outside Activities, Section 8.2.15
  • Federal Policies Regarding Intellectual Property
Key Provisions:

  • Investigators who receive federal funding are required by law to disclose potentially patentable inventions, made using any federal support, to the grant recipient’s (GSURF’s) Office of Technology Transfer.
  • The Georgia State University Research Foundation (GSURF) must comply with reporting requirements regarding inventions. GSURF may “elect title” to inventions. By electing title to an invention, GSURF asserts ownership over it and agrees to comply with several stipulations all designed to insure that the invention is protected and a credible effort made to commercialize.
  • GSURF must pursue protection and commercialization of inventions for which title is elected.
  • If GSURF does not elect title, ownership remains with the federal government. Ownership does not devolve to the inventors. However, inventors may request title from the sponsor.
  • Whether GSURF or an inventor obtains title to a particular invention, the federal government retains certain rights and imposes certain obligations relating to the invention.
  • Responsibility of Applicants for promoting objectivity in research for which PHS or NSF (section 510, page 61) funding is sought.
Material Transfer Agreements are used to document the transfer of material from one entity to another, either to transfer material away from the university or to receive a material into the university. If you have been asked to provide a material to a scientist at another institution, please complete the Request for Outgoing Materials Form and submit the form to the Georgia State University Office of Legal Affairs. Legal Affairs will prepare the appropriate Material Transfer Agreement to be signed by the university and the institution requesting the materials.

If you are interested in receiving materials from a scientist at another institution, please send any Material Transfer Agreement received from the institution to the Office of Legal Affairs for review.

Frequently Asked Questions

In routine cases, the form should be routed to your chair and dean for a signature, and then to the Office of Legal Affairs. You should receive confirmation that your forms have been received at Legal Affairs within approximately five days. If a public disclosure (e.g., poster abstract, presentation, article) is imminent, you should contact the Office of Legal Affairs immediately via telephone. Failure to protect an invention prior to publishing it typically results in forfieture of critical patent rights, particularly outside the U.S. Also, submittal of Intellectual Property Disclosure Form is required when an invention is made, under both the Georgia State University Intellectual Property Policy and under the terms of federally funded grants and contracts.

Once the form is received, it will be reviewed for completeness and from a legal and commercial perspective. For research funded through federal contracts and grants, copies will be submitted to the appropriate funding agency, as required by law. Completed disclosures are then ordinarily referred to the Intellectual Property Committee for its evaluation and recommendation. You may be asked to give a brief presentation before the committee about your invention or creation. The committee will make a recommendation to the vice president for research as to whether the university should pursue development of intellectual property. The vice president will consider the recommendation. The vice president for research or the director of the Office Technology Commercialization and Industry Relations will respond to the creator in writing as to whether the university intends to pursue development of the intellectual property.

There are four common forms of intellectual property protection. These are patents, copyrights, trademarks, and trade secrets.

In practice, patent protection is generally the most robust. It is often available to protect inventions emanating from life science research such as novel genes, proteins, compounds and methods of using them. It may also apply to devices. Patent protection may also be available for key algorithms, or steps of a computer program.

Software programs are protected under copyright law. Copyright protection is narrower than patent protection. It is sometimes said that copyright protects the expression of ideas, but not the ideas themselves. This means that while the actual source code may be copyrighted, the algorithms embodied in software programs frequently are not protected under copyright law. Certain forms of software may also be protected under copyright law as an audiovisual work. Copyright law applies generally to literary works, musical works, dramatic work, pantomimes and choreographic works, pictorial, graphic, and sculpural works, motion pictures and other audiovisual works, sound recordings, and audiovisual works.

Many software programs may have a commercial name that people associate with the origin of the software. In such instances trademark protection may be sought. Where a software program can be commercialized without disturbing the source code widely, trade secret protetion may be important.

Material Transfer Agreements (sometimes known as MTA’s or Biological Material Agreements) are not a form of intellectual property per se, but they are very important and require protection. Investigators should not provide others with any material, including those that contain novel and potentially valuable genes, or gene products, antibodies, viruses, etc., without contacting the Office of Legal Affairs and requesting a MTA. Also, Georgia State University investigators should seek advice from the Office of Legal Affairs prior to signing a material transfer agreement in connection with receiving materials from third parties. Most faculty do not have the authority to sign contracts. Furthermore, transfer of certain materials and equipment, even those that may seem innocuous, may violate export control and national security laws, which could result in civil or criminal penalties.

Georgia State University is willing and able to work with investigators to help commercialize inventions. Commercialization will generally be in the form of a license to an existing company or to a new “start-up” company created to commercialize the discovery. It is helpful and often essential that the investigator/inventors be thoroughly involved in the process. In many cases investigators play the lead or a pivotal role.

The first service offered by the Office of Technology Commercialization and Industry Relations is assistance and financial support for obtaining legal protection, frequently a patent. Having a robust proprietary position is, almost without exception, a mandatory prerequisite for commercialization.

Next, the Office of Technology Commercialization and Industry Relations, working with the inventor, and on occasion with the assistance of research assistants or consultants, will develop a commercialization strategy for the invention. This will involve assessing the stage of development of the invention, researching the market for technology, and identifying both the competition and the companies most likely to have an interest in the invention.

It may be determined that it is too early to approach potential licenses regarding an invention or to encourage creation of a start-up company. In such cases the inventor and the Office of Technology Commercialization and Industry Relations will work together to identify the resources and expertise needed to advance the project. For example, some funds may be needed to support “proof of principle” or “concept validation” studies or to prepare a prototype.

If the determined strategy is to pursue a commercial license and an invention is ready to be marketed, the Office of Technology Commercialization and Industry Relations will work with inventors to prepare appropriate marketing materials. The office and the inventors will decide which companies to contact and the best means for doing so. If one or more companies become interested in the invention, the office can assist the inventor by preparing confidentiality and evaluation agreements and by negotiating a commercial arrangement.

Promoting economic development is part of the Georgia State University mission. Georgia State encourages faculty/inventor participation in start-up ventures. However, considerable deliberation, analysis, and research should be done prior to launching a new business.

The Office of Technology Commercialization and Industry Relations can assist inventors in doing the required diligence by offering advice and making experts available to the inventor, such as local entrepreneurs. If it appears that the technology can support a new venture, and the inventor is committed to founding a company, the office may help the inventor identify other local resources to assist inventors in developing a business plan, identifying management personnel for the new company, space, and facilities rentals, and other issues. The office cannot prepare the business plan or provide start-up funding. Their role in the endeavor is to assist the faculty through the start-up process.

Inventors are required to report the creation of an invention, new software program, new biological material, etc., to the university under the Georgia State University Intellectual Property Policy. For research that is federally funded, the federal government also requires that investigators report inventions to the university. The process of completing a Georgia State University Intellectual Property Disclosure Form offers a good mechanism for the inventor to initiate the reporting process and to seriously consider the commercial potential of his or her discovery.

Successful commercialization may offer substantial personal, professional (lab support), and financial rewards to inventors. Georgia State University’s Intellectual Property Policy explicitly provides that the first $20,000 of accumulated net income be distributed to the creator(s) of intellectual property, with any net income over $20,000 divided among the creator(s), the creator’s department, the college, and the Georgia State University Research Foundation. Equally important is the gratification derived from helping to bring a useful invention to market. Frequently the inventor’s participation is a critical element in moving an early state project toward the market. Many inventors find the exposure to legal and business issues a fascinating learning experience.

It is also worthwhile to recognize that commercialization of intellectual property via a license to an existing company may also enable the inventor to have a role. Often the licensing company may want the inventor’s involvement (perhaps in some type of consulting role) in the product development and marketing.

Unfortunately, many patentable and technically exciting inventions are not successfully commercialized or have the realistic potential to ever do so in the future. Start-up companies have a low success rate. The primary downside in becoming involved in trying to commercialize a particular invention via a start-up company is that one may not have a great deal to show for the significant commitment of time, dollars, and effort required.

However, since the advent of the Bayh-Dole Act, U.S. universities as a group have generated thousands of successful inventions and launched hundreds of profitable spin-off companies. Many Georgia universities have had remarkable success in commercializing research results. While one should be circumspect about the probability of success, the possibility and potential are real.

 
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