5.4 Intellectual Property Policy

5.4.1 Introduction

This policy shall be applicable to all full or part-time faculty, staff, and students of the Georgia Institute of Technology.

The Georgia Institute of Technology (GIT) is dedicated to teaching, research, and the extension of knowledge to the public. Its personnel recognize as two of their major objectives, the production of new knowledge and the dissemination of both old and new knowledge. Inherent in these objectives is the need to encourage the development of new and useful devices and processes, the publication of scholarly works and educational materials, the development of computer Software, and other forms of Intellectual Property. Such activities

1. Contribute to the professional development of the faculty, staff, or students involved,
2. Enhance the reputation of GIT,
3. Provide additional educational opportunities for participating students, and
4. Promote the general welfare of the public at large.

Patentable inventions and materials often come about because of activities of GIT faculty, staff, or students who have been aided wholly or in part through the use of GIT resources. It becomes significant, therefore, to insure the utilization of such inventions for the public good and to expedite their development and marketing. The rights and privileges, as well as the incentive, of the inventor must be preserved so that his or her abilities and those of other GIT faculty, staff, and students may be further encouraged and stimulated.

GIT recognizes and encourages the publication of scholarly works as an integral part of the processes of teaching, research, and service. GIT encourages faculty, staff, and students to regularly prepare for publication, usually through individual effort and initiative, articles, pamphlets, books, and other scholarly works which may be subject to copyright and which may generate royalty income for the author. Publication may also result from work supported either partially or completely by the institution. With the advent of innovative techniques and procedures, the variety and number of materials that might be created in a university community have increased significantly, causing the ownership of such copyrightable materials to become increasingly complex.

GIT aims to be at the forefront of teaching and to provide diverse high-quality learning environments. To achieve these purposes, GIT wishes to encourage and provide incentives for innovators in the development of improved educational materials. Through the efforts of faculty and staff, digital and other storage and transmission media will have an increasing role in expanding educational effectiveness and accessibility. When such materials are used to expand programs outside the traditional campus, they require and deserve Intellectual Property protection.

GIT recognizes the need for enhanced development and dissemination of software technology as a means of expressing both old and new knowledge. Inasmuch as GIT is aware of the dynamic nature of Software and that the value of Intellectual Property comes from the ability of its owner to control its use and that such value is directly related to the degree of protection it enjoys under the law, GIT encourages the protection of such expressions of knowledge by the utilization of appropriate Intellectual Property laws and the creation of comprehensive software technology transfer policies and procedures.

The Board of Regents has, by contract, granted rights to Intellectual Property created at GIT to the Georgia Tech Research Corporation (GTRC). When this policy speaks to ownership of Intellectual Property by GIT, GTRC shall be the owner.

The foregoing considered, the Georgia Institute of Technology does hereby establish the following policy with respect to the development, protection, and transfer of rights to Intellectual Property resulting from the work of its faculty, staff, or students.

5.4.2 Definitions

"Intellectual Property" shall be deemed to refer to Patentable Materials, Copyrighted Materials, Trademarks, Software, and Trade Secrets, whether or not formal protection is sought.

"Patentable Materials" shall be deemed to refer to items other than Software which reasonably appear to qualify for protection under the patent laws of the United States or other protective statutes, including Novel Plant Varieties and Patentable Plants, whether or not Patentable thereunder.

"Copyrighted Materials" includes the following: (1) books, journal articles, texts, glossaries, bibliographies, study guides, laboratory manuals, syllabi, tests, and proposals; (2) lectures, musical or dramatic compositions, unpublished scripts; (3) drawings, sketches, renderings, blueprints, photographs; (4) films, filmstrips, charts, transparencies, and other visual aids; (5) video and audio tapes or cassettes; (6) live video and audio broadcasts; (7) programmed instructional materials; (8) mask works; and (9) other materials or works other than Software which qualify for protection under the copyright laws of the United States (see 17 U.S.C.102 et seq.) or other protective statutes whether or not registered thereunder.

"Software" shall include one or more computer programs existing in any form, or any associated operational procedures, manuals, or other documentation, whether or not protectable or protected by patent or copyright. The term "computer program" shall mean a set of instructions, statements of related data that, in actual or modified form, is capable of causing a computer or computer system to perform specified functions.

"Trademarks" shall include all trademarks, service marks, trade names, seals, symbols, designs, slogans, or logotypes developed by or associated with the Georgia Institute of Technology. (See 15 U.S.C.1127.)

"Trade Secrets" means information including, but not limited to, technical or nontechnical data, a formula, a pattern, a compilation, a program, a device, a method, a technique, a drawing, a process, financial data, financial plans, product plans, or a list of actual or potential customers or suppliers which: (i) derives economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons, who can obtain economic value from its disclosure or use; and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. (See O.C.G.A. 10-1-761.)

"Patentable Plant" means an asexually reproduced distinct and new variety of plant. (See 35 U.S.C.161.)

"Mask Work" means a series of related images, however fixed or encoded: (i) having or representing the predetermined, three dimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a semiconductor chip product; and (ii) in which series the relation of the images to one another is that each image has the pattern of the surface of one form of the semiconductor chip product. (See 17 U.S.C. 901.)

"Novel Plant Variety" means a novel variety of sexually reproduced plant. (See 7 U.S.C.2321 et seq.)

“Creator” means a member of the Georgia Tech faculty, staff, or student body who makes an invention, as defined under U.S. patent law, or who participates in the creation of a copyrightable work, under US copyright law, or both. One is a participant in creating a copyrighted work when one makes an original work of authorship (or part thereof) fixed in any tangible medium of expression from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Being an editor or otherwise facilitating a creation does not ordinarily qualify one as a “Creator.”

“Commercialization” means the process of developing marketable Intellectual Properties and licensing them to parties outside GIT who, in turn, will develop products or services based on them to sell or license to others. Thus, for example, this term does not apply to GIT offering a course or seminar for a fee.

5.4.3 Intellectual Property Advisory Committee

Intellectual Property activities shall be under the general cognizance of the Executive Vice President for Research (EVPR) and administered by the General Manager of GTRC. An Intellectual Property Advisory Committee will be appointed by the EVPR after consultation with the Faculty Executive Board. The IP Advisory Committee will be constituted as follows: one representative shall be selected from the Office of Administration and Finance, one representative shall be selected from the Office of Legal Affairs; one representative shall be selected from the Georgia Tech Research Corporation; and one or more faculty representative(s) shall be selected from each of the colleges so that there is an adequate representation of specialized areas such as but not limited to software, instructional materials, translational research, and inventions; and one representative shall be selected from the student body. The EVPR shall appoint the Chair of the Committee to serve as needed.

The role of the IP Advisory Committee is to:

1. Advise the EVPR and General Manager of GTRC on policy matters relating to Intellectual Property;
2. Propose amendments considered necessary to the Intellectual Property Policy;
3. Advise on settlement of disputes; and
4. Advise on deviations from this policy.

5.4.4 Assignment and License of Rights

A.  All full or part-time faculty and staff shall, as a condition of employment with the Institute, execute an agreement, assigning all rights, title, and interest, to the extent prescribed in this policy, in any Intellectual Property to the Georgia Tech Research Corporation. Students shall not be required to execute an agreement except as set forth in this policy under section 50.5.B. This policy shall, however, be applicable to them as provided in the General Catalog and Student Handbook.

B.  Students shall be required to execute an agreement only:

1.  When working on a research project funded by an entity other than GIT, the Georgia Tech Foundation, or the Board of Regents;

2.  When employed by GIT; or

3.  When required by the Office of the Provost. Such requirement may be recommended by a faculty member who has students working in faculty-directed research.

C.  For Copyrighted Material that is (1) created by a student in furtherance of or in connection with student’s studies or activities at GIT during his/her matriculation at GIT and (2) that does not fall under Section 5.4.4B above, the student hereby grants to GTRC and GIT a non-exclusive, royalty-free license to copy, display, distribute, perform, display and make derivate works of the Copyrighted Materials for GTRC’s and GIT’s purposes only.
 

5.4.5 Determination of Rights in Intellectual Property

A. Sponsor-Supported Efforts
The grant or contract between the sponsor and GTRC, under which Intellectual Property is produced, may contain specific provisions with respect to Intellectual Property. The Creators must be aware of these provisions as they can impact the licensing and Commercialization opportunities of the Intellectual Property.

B. Institution-Assigned Efforts
Ownership of Intellectual Property developed as a result of assigned institutional effort, including any effort normally associated with one's discipline and position, in education, research, and service, shall reside with GTRC.

The general obligation to produce scholarly and creative works, such as textbooks and associated supplementary material, books, journal articles, does not constitute a specific assignment for this purpose. Creation of computer Software may be a scholarly activity and it may not necessarily constitute a specific assignment for this purpose. (See also Definitions in Section 5.4.2).

C. Institution-Assisted Individual Effort
Ownership of Intellectual Property developed by faculty, staff, or students of GIT where GIT provides support of their efforts or use of institutional resources in more than a purely incidental way (unless such resources are available without charge to the public) shall reside with GTRC.

D. Individual Effort
In accordance with U.S. copyright law, textbooks, books, and journal articles and their directly associated electronic media will normally be treated as individual efforts owned by the author(s) unless one of the exceptions listed in 5.4.5 A-C applies.
In addition, ownership rights to Intellectual Property developed by GIT faculty, staff, or students shall reside with the Creator of such Intellectual Property provided that: (1) there is no use, except in a purely incidental way, of GIT resources in the creation of such Intellectual Property (unless such resources are available without charge to the public); (2) the Intellectual Property is not prepared in accordance with the terms of GIT contract or grant; and (3) the Intellectual Property is not developed by faculty, staff, or students as a specific institution assignment as discussed in 5.4.5 B above. The nature and extent of the use of GIT resources shall be subject to GIT regulations.

When there are multiple Creators, some or all may have ownership rights subject to the tests described above, but the parties are encouraged to enter into a mutually signed written agreement to clarify their respective rights and responsibilities, in accordance with guidance in Section 5.4.6.

E. Other Efforts
Ownership rights to Intellectual Property developed under any circumstances other than those listed in Section 5.4.5 A-D of this policy shall be determined on an individual basis and approved by the General Manager of GTRC or his or her designated representative.
 

5.4.6 Administrative Procedures

Georgia Tech Research Corporation (GTRC) is responsible for implementation of the Institute's Intellectual Property policy other than the management of Trademarks pertaining to the name, emblem, insignias, and logos of the Georgia Institute of Technology, which Trademarks shall be managed by the Georgia Tech Foundation.

To assure protection and potential Commercialization, Georgia Tech faculty, staff, and students are encouraged to disclose Intellectual Property to GTRC in a timely manner prior to any disclosure outside of Georgia Institute of Technology. GTRC will work with the Colleges, GTRI, Georgia Tech Professional Education, and other involved units to ensure that there are adequate tools in place to facilitate the disclosure of all types of Intellectual Property and that these are received by GTRC in a timely manner. There is a long history of disclosure of patentable technology but attention must also be paid to documenting and managing other types of Intellectual Property.

GTRC may be obligated to report certain Intellectual Property to federal and other sponsors of research. Georgia
Tech faculty, staff, and students should discuss the extent and nature of such disclosures with GTRC.

GTRC generally seeks Intellectual Property protection for potential licensing purposes only. Intellectual property protection for reasons other than such purposes must be funded by the relevant school, laboratory, center, or individual Creator.

GTRC will advise the Creators of its decision to accept Intellectual Property for administration within ninety (90) days of receipt of the completed Intellectual Property disclosure. Should GTRC decide not to accept the Intellectual Property for administration, or if it at any future time decides not to take any further action in marketing, or encouraging further development as a prelude to marketing, the Intellectual Property, it shall within thirty (30) days of such decision notify the Creators and, should the Creators so request, and if able to do so, release the Intellectual Property to the Creators.

On acceptance by GTRC of any Intellectual Property for administration, the Creators shall do all things necessary and comply with reasonable requests by GTRC, to assist in obtaining Intellectual Property protection and/or marketing the Intellectual Property. Such assistance will be at no cost to the Creators.

No Institute personnel shall take any action to seek Commercialization of, or receive any benefit from, any GTRC-owned Intellectual Property other than in accordance with the Georgia Institute of Technology Intellectual Property policy.

Distribution of Income
The first Two Thousand Five Hundred Dollars ($2,500) of gross licensing income derived from the Commercialization of any Intellectual Property shall be paid to the Creators if they have filed a disclosure with GTRC in accordance with these procedures. Thereafter, the net income, computed on a cumulative basis, shall be distributed as follows:
 

All licensing net income from royalties and similar income, i.e. gross income less all expenses attributable to that specific disclosure (e.g., patent costs, attorney costs, marketing costs, reproduction, mailing, consumables, and unreimbursed development costs, etc.), shall be distributed quarterly by GTRC to the Creator and/or unit. Any expenses to be reimbursed before distribution of royalties, over and above GTRC expenses, should be preapproved by all parties (GTRC, Unit, and Creators) before they are incurred but must be agreed in writing by all the parties (GTRC, Unit, and Creators) prior to distribution.

In the case of the death of a Creator, any payment due, or which would have been due to such Creator, shall be made to the Creator’s estate.

The “Creator” will be the Creator or Creators of record listed on the original Intellectual Property disclosure, or as subsequently updated in writing.  When more than one Creator is listed, the allocation will be determined by the percentage of ownership listed in the original or updated disclosure. That allocation may only be altered for future distribution of royalties or other proceeds by written request signed by all Creators listed on the original disclosure. In the case of the death of a Creator, any payment due, or which would have been due, to such Creator shall be made to the Creator’s estate.

Reinvestment funds are intended to seed additional research and development of new Intellectual Property. Distribution of a portion of royalties, and similar or related income, for reinvestment will be made in the form of a GTRC grant to the primary home unit of the principal Creator for use in funding additional research and development or other scholarly activities at the unit level.
The portion of royalty and similar or related income that accrues to GTRC shall be used to partially offset the costs of technology transfer or dissemination not allocable to specific licensed Intellectual Property and to support the research and teaching infrastructure and programs of GIT.

Equity Stakes
In the event that GTRC accepts equity in a start-up company as part of consideration for a license to technology or to any other Intellectual Property, the Creators may be entitled to receive a portion of the equity shares received from the company by GTRC. A Creator may participate, subject to the GIT Conflict of Interest Policy, in the formation of a company to commercialize Intellectual Property that is licensed from GTRC and hold equity in the resulting start-up company. However, a Creator who accepts an equity interest of any form or size from a licensee shall receive no portion of any equity shares received from the licensee by GTRC.

Creators choosing not to accept an equity interest directly from a licensee will receive a portion of the equity shares received by GTRC according to the following schedule: a) If there is a single Creator then one-third (1/3) of the total shares received by GTRC, the Creator’s portion, will be distributed to that individual. GTRC will carry the remaining two-thirds (2/3) of the shares received, the GTRC portion, until sale at a date to be determined later. b) If there is more than one Creator and all Creators choose not to accept an equity interest directly from a licensee, then one-third (1/3) of the total shares received by GTRC, the Creators’ portion, will be distributed to all Creators on a pro-rata basis based on their relative contributions to the discovery and development of the Intellectual Property in question. GTRC will carry the remaining two-thirds (2/3) of the shares received, the GTRC portion, until sale at a date to be determined later. c) If there is more than one Creator and one or more Creators choose to accept an equity interest directly from the licensee and one or more choose not to participate in the formation of the company (i.e. not accept shares directly from the company), then the normal Creators’ portion of the total shares received by GTRC (that is, the one-third (1/3) portion in a) and b) above) is reduced by the contributions of those Creators choosing not to receive shares from GTRC relative to all Creators. The remaining Creators’ portion of shares received by GTRC is distributed to those Creators based on each of the remaining Creators’ contributions relative to those remaining Creators. The GTRC will obtain all remaining shares. [Example: There are two (2) Creators with a mutually agreed upon split of 60% contribution by Creator#1 and 40% by Creator #2. Creator #1 takes equity directly from the company and GTRC negotiates for a total of one hundred (100) shares of equity with the company. The normal 33% Creators’ share would be thirty-three (33) shares. Since Creator #1 chose to take equity directly from the company, he would not receive any GTRC received shares. Creator #2 would get 0.33 x 40 = 13.2 shares, the same number he would have received if Creator #1 had not opted for directly receiving company equity. The remaining 33 - 13.2 = 19.8 shares will be held by GTRC, along with the other sixty-seven (67) shares.] GTRC will carry its portion of the shares received until sale at a date to be determined later.

Upon sale of any equity shares received by GTRC, the net proceeds received will be kept by GTRC and will be distributed to the sponsoring unit for reinvestment according to the chart shown above for the unit and GTRC.

The distribution of royalties to the Creator(s), to reinvestment, and to GTRC will continue regardless of the equity choices made by the Creators.

Retention of Ownership
Ownership of Intellectual Property Rights will normally be retained by GTRC. This is to ensure that all licensable knowledge created or invented will be available for public use. Exclusive licensing agreements by GTRC will contain a due diligence provision to require the license to revert to GTRC within a reasonable period of time if the licensee does not make the Intellectual Property available to the public.
 

5.4.7 Fair Use and Other Protections Relating to Copyrights

Faculty members may from time to time participate in creating a copyrighted work, which may be owned by GTRC in accordance with Sections 5.4.5 and 5.4.6. That notwithstanding, such faculty members have the right To make modifications to their parts of such works and to prepare derivative works therefrom; and To use and present said derivative works, whether or not the faculty member is still employed by GIT, subject to the GIT Conflict of Interest Policy.

GIT recognizes the need and has the right to require that the quality and freshness of Copyrighted Materials used in its programs be maintained. It will make every reasonable effort to involve faculty, staff, and student Creators of copyrighted works in on-going quality assurance and improvement of the works they created. GIT shall, in any case, recognize and acknowledge the Creators of any material used in university programs, subject to the permission of the Creators.

Within the GIT community, parties involved in the development of copyrightable materials (Georgia Tech faculty, staff, students, and appropriate units of Georgia Tech) may enter into mutually signed written agreements to determine the particular terms and conditions of these policies applicable to specific developments. GTRC shall administer the execution of these agreements.
Students have rights to hold copyrights, subject to the criteria governing copyright ownership as set forth in Sections 5.4.5 and 5.4.6.

Names and Trademarks associated with and belonging to GIT may not be used except by permission of the Office of Institute Communications and Public Affairs, acting on behalf of the Georgia Tech Foundation. Members of the GIT community may identify themselves as such, in ways customary in scholarly work, but any such use shall seek to avoid inappropriate implications of sponsorship or endorsement by GIT, and where necessary, include specific disclaimers.

Members of the GIT community are cautioned to respect and observe the rights of other copyright owners, in accordance with fair use provisions of current U.S. copyright law. Similarly the rights of any sponsors involved in the development of Intellectual Property must be respected and protected appropriately.

5.4.8 Other Matters

Appeals and Conflicts
GIT personnel shall have the right to appeal from decisions of the General Manager of GTRC regarding IP protection and commercialization. Appeals shall be made to the EVPR.

Changes in Policy
This policy may be changed by the EVPR on the recommendation of the Intellectual Property Advisory Committee, with the endorsement of the Faculty Executive Board, or on his or her own initiative, after consulting with the Intellectual Property Advisory Committee and the Faculty Executive Board.

Order of Precedence
In the event of conflict, between this policy and any policy of the Board of Regents, the latter shall prevail.