The Office of Technology Licensing & Commercialization oversees technology transfer and the management and protection of intellectual property at Georgia State. We work in partnership with 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 Researchers Need to Know
Intellectual property (IP) is the “tangible or intangible results of research, development, teaching, or other intellectual activity” by faculty, staff or students using university resources. “Using university resources” includes all use of employee or student time, sponsored or university support, equipment, supplies, facilities and clinical practice. Even when no physical facilities have been used, an idea arising from your work is IP covered by this definition.
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. A copy of these regulations can be found on the website for the National Institutes of Health.
This right of ownership allows Georgia State to protect the new IP you create at the university as well as our ability to use the IP and build on your research. Additional details can also be found in the university’s Intellectual Property Policy.
Technology transfer refers to the process of transferring knowledge, methods or discoveries from the university to others. This process generally involves disclosing, protecting and licensing the rights in the IP to others for further development or commercialization.
Beyond the immediate satisfaction of commercializing your invention, technology transfer also provides a public good and enables the results of your research to have a greater impact. The Office of Technology Transfer & Commercialization (OTTC) works with you
- To ensure inventions and rights arising from your research are protected,
- To identify potential industry partners to conduct further development of your work, and
- To support you in your entrepreneurial and startup endeavors
Additionally, any revenue generated by the university from these activities supports research across Georgia State.
An inventor is someone who conceives the invention, either in whole or in part. 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, and 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.
It is the responsibility of each faculty member, staff member or student who develops IP to report it to the Office of Technology Licensing & Commercialization by completing the IP Disclosure Form.
Once you submit your form, OTTC will conduct an assessment to identify the potential applications, market potential and existing IP that may need to be considered before making a decision whether to pursue formal patent protection. Please note, not all inventions may receive a formal assessment, nor does all IP need to be patented in order to be commercialized. If a formal assessment is completed, a copy is shared with the inventor(s) to solicit feedback and comments.
A publication or presentation that describes a discovery or invention is a form of disclosure and may limit or negate patent protection. Researchers should consider most forms of communication — written, verbal and electronic — with any person outside the university to be a form of public disclosure. If you have questions about an upcoming presentation or publication and how it could affect your IP, please contact OTTC.
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 Office of Technology Transfer & Commercialization.
Laboratory notebooks can be an important record to establish your rights in a patented invention. Accurate record-keeping and good lab notebook practices are critical to demonstrating your original conception date and the steps taken to reduce your invention to practice, as well as who may have obtained information about your invention from you. With the advent of the America Invents Act, a properly kept lab notebook is a critical tool in providing evidence that an invention originated from you.
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.
What should you do before sharing potentially confidential information with other investigators or entities outside of Georgia State (Confidential Disclosure Agreement-CDA)?
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.
Research tools and reagents are often shared among colleagues. MTAs are formal contracts that define the proper use and limits of shared items, which may include biological samples, chemical reagents or computer software. Always execute an MTA prior to sending or receiving any research material outside of Georgia State. Doing so ensures clear IP ownership and supports necessary patent documentation. In conjunction with the Office of Legal Affairs, OTTC can assist faculty in processing and negotiating MTAs. Forms and further instruction can be found here.
The Office of Sponsored Proposals (OSP) 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 the Office of Technology Transfer & Commercialization.
What about pursuing funding to support further development of IP (for example, through SBIR grants, GRA Ventures, etc.)?
The Office of Technology Transfer and Commercialization can help Georgia State researchers pursue funding through the GRA Venture Development program, Federal SBIR/STTR programs and other initiatives. Details regarding these programs can be found here. If you are interested in founding a startup company to pursue SBIR/STTR funding, the Office of Research Integrity can provide more information about the university’s process for disclosing and managing potential conflicts of interest.
Please reach out to the Office of Technology Transfer and Commercialization. You can email our general inbox at [email protected].
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.
- The invention must be novel (not already invented).
- The invention must be useful (referred to as utility).
- 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)
More About 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 is 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 Office of Legal Affairs (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 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 demonstrate 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].
If desired, additional information identifying the unit or how to contact the author may also be included immediately below the copyright notice.
A 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.
A trade Secret is a plan, process, mechanism, compound or “proprietary information” known only to its owner and to his/her employees to whom it is necessary to confide it.
The university licenses its intellectual property to businesses, 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 Office of Technology Licensing & Commercialization 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 that the inventor generated.
After patent costs are recovered, royalty or license income derived from commercialization of Georgia State University IP shall be handled according to the university’s Intellectual Property Policy.