VII. Georgia Gwinnett College Technology Transfer

 

VII. A. Georgia Board of Regents Policies on Intellectual Property

• Board of Regents Intellectual Property Policy, Section 6.3
• Board of Regents Policy on Outside Activities, Section 8.2.15

 

VII.B. Georgia Gwinnett College Faculty Manual Policies and Procedures

• GGC Faculty Manual Policies and Procedures

Technology Transfer refers to the process of transferring Intellectual Property or any innovation or discovery conceived or developed from the college/university to another organization for the purpose of further development or commercialization. The process typically includes:

• Identifying new technologies;
• Protecting technologies through patents and copyrights; and
• 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 is Intellectual Property under GGC’s Technology Transfer?

Intellectual Property (IP) is the “tangible or intangible results of research, development, teaching or other intellectual activity.” Section 6.3.2.1 of the GGC’s Intellectual Property Policy defines Intellectual Property as patentable materials, copyrighted materials, trademarks, software, and trade secrets, whether or not formal protection is sought.

Who is considered an inventor or originator?

Inventors are anyone who contributed to the ingenuity necessary to create an invention. Under the Patent Law, an inventor is a person who takes part in the conception of the ideas in the patent claims of a patent application. Thus, inventorship of a patent application may change as patent claims are changed during the prosecution of the application. A person who provides money to create an invention is not an inventor. Inventorship is not something that can be negotiated.^[1]

Inventorship may require an intricate legal determination by the patent attorney prosecuting the application. Inventorship is often more restricted than authorship, thus it is important to note that authorship on an academic publication does not necessarily equate to inventorship on a patent application.^[2]

Intellectual Property under 1980 Bayh-Dole Act

Under the 1980 Bayh-Dole Act, universities, colleges, small businesses, and non-profit institutions have the right to own the Intellectual Property rights resulting from federally funded research or projects. It fundamentally changed the nation’s system of technology transfer by enabling universities, colleges, small businesses, and non-profit institutions to retain title to inventions and take the lead in patenting and licensing groundbreaking discoveries. Prior to this act, the government retained ownership of all patents or copyright that has used government money. The government also retained the right to license out the inventions to private sector, which it did non-exclusively. This, however, was detrimental to the growth of the United States because companies wanted to develop and eventually sell products exclusively. Thus, universities, colleges, small businesses, or non-profit institutions were creating new and existing technology using government funds that were never reaching the industry or the public.^[3]

The act was built quite soundly to allow incentives for all parties involved (government, academia, & the industry), but also has safety measures to ensure that the inventions are handled correctly. The act defines how universities, college’s, small businesses, or non-profit institutions must appropriate the funds created through royalties due to licensing while the government retain a special license to use the invention. As a result, university, college, small business, or non-profit institution related patents have increased enormously since the passage of the act as well as the number of businesses created and the number of jobs involved relating to such.

GGC’s Intellectual Property in relation to 1980 Bayh-Dole Act

• Sponsor-Supported Efforts - Intellectual Property developed by faculty, staff, or students through sponsored project agreements with the College or one of its foundations often contain specific provisions with respect to ownership of Intellectual Property developing in the course of such work, in which case the terms of the agreement shall establish ownership. When the sponsored project agreement is silent on the matter, all rights in intellectual property shall vest in the college. Income, if any, from such Intellectual Property shall be shared with the Originator, subject to the sponsor’s requirements, in accordance with Section 6.3.4.10 of the Intellectual Property Policy.
• College-Assigned Efforts - Ownership of Intellectual Property developed by faculty, staff, or students as a result of College-assigned efforts shall reside in the College. Copyrightable works created by an employee in the course of his/her employment are considered to be works made for hire under copyright law, with ownership vested in the employer. However, any income from such Intellectual Property shall be shared with the Originator, in accordance with Section 6.3.4.10.

A faculty member’s general obligation to produce scholarly and creative works does not fall under college-assisted efforts.

• College-Assisted Individual Effort - Ownership of Intellectual Property developed by faculty, staff, and students whose use of College resources was more than purely incidental shall be shared by the Originator and the College. All other resources available to the public without charge, e.g. college-owned/leased office, lab, or studio space or general use equipment; general use computer equipment; library resource, electronic or internet shall not result to shared ownership defined above.

Use of the following College resources in the production of Intellectual Property generally shall constitute more than purely incidentaluse which shall result in shared ownership, e.g. resources provided by College-funded and/or College Foundation-funded grants, and stipends; College employees (other than faculty) within the employment period, long distance telecommunication services and other cost-added supplies and services; and College facilities other office, labs, studios, or library. Income, if any, from such Intellectual Property shall be shared as described in Section 6.3.4.10 of the Intellectual Property Policy. 

• Individual Effort - Ownership of Intellectual Property developed by faculty, staff, and students designated as Individual Effort shall reside with the Originator of such Intellectual Propertyprovided that: the Intellectual Property was not developed in accordance with the terms of sponsored project agreement mentioned above; the Intellectual Property was not developed by faculty, staff, or student as a specific College assignment mentioned above; and there is no significant use of College resource in the creation of such Intellectual Property also mentioned above. The Originator of the Intellectual Property shall have the opportunity to demonstrate that this classification applies.
• Other Efforts - Ownership of Intellectual Property developed by faculty, staff, and students under other efforts is determined according to the criteria specified in Section 6.3.3.1 through Section 6.3.3.4 (Sponsor-Supported Efforts, College-Assisted Efforts, College-Assisted Individual Effort, & Individual Effort). Such efforts include but not limited to, consulting for outside organizations, collaborating with non-College personnel, or serving on non-College boards, committees, task force, etc. Any agreement should include statement that the faculty member has intellectual property obligations to the College and that the Intellectual Property Policy should be attached to the agreement. In the event that there is any conflict between College personnel’s obligations to the Intellectual Property Policy and their obligations to the entity or corroborative arrangement for which they provide these efforts, the obligations to the Intellectual Property Policy shall control.

What you should do before inventing?

Documenting and keeping good records of your creative progress is very important. It also important to know your Intellectual Property rights and obligations as provided in the GGC’s Intellectual Property Policy.

It is important to note that disclosing your Intellectual Property to the Intellectual Property Committee for inventions developed meeting the criteria defined in Section 6.3.3.1 through Section 6.3.3.3 (Sponsor-Supported Efforts, College-Assigned Efforts, & College-Assisted Individual Effort) is required. It is strongly recommended that you complete the GGC Intellectual Property Form as soon as you think you yielded a discovery or invention. The completed form will serve as a legal document establishing record of the date of conception of the invention.

What should an Originator do if he/she developed an Intellectual Property?

1. SPONSOR-SUPPORTED EFFORTS
   1. Inform Intellectual Property Committee. It is the Originator’s duty to promptly inform the Intellectual Property Committee of the classified discovery or invention developed in the course of Sponsor-Supported Efforts.
   2. Complete the GGC Intellectual Property Disclosure Form. Disclosing Intellectual Property is required for inventions & discoveries made during Sponsor-Supported Efforts. Submission of the disclosure form is mandatory by all federal funded agencies. Colleges and Universities faces strict requirements for inventions and discoveries developed in the course of such work. It is important to contact GGC’s Intellectual Property Committee regarding the process.

   Disclosure is the first step leading to the establishment and protection of Intellectual Property rights necessary to bring about the commercialization of the Technology. It is strongly recommended that the Originator completes the GGC Intellectual Property Form as soon as he/she yielded a discovery or invention. The completed form will serve as a legal document establishing record of the date of conception of the invention.

   3. Review and Evaluation by the Intellectual Property Committee. Once the invention is disclosed in confidence, the Intellectual Property Committee will review the disclosure and evaluate the invention’s potential for Intellectual Property protection and commercialization. The committee is also task in determining administration plan and the eventual profit sharing.

   Sponsored-supported project agreements usually contain specific provisions with respect to Intellectual Property ownership. In which case, the terms of the agreements shall establish ownership. When the sponsored project agreement is silent on the matter, all rights in Intellectual Property shall vest in the College.

   Originator should cooperate with the College and sign all papers and legal documents deemed necessary to protect and commercialize the Intellectual Property covered. In the absence of specific provisions in the Sponsorship agreement, College takes charge in the administration of the Intellectual Property involve. Income, if any, will be shared by the Originator and the College, subject to the sponsor’s requirements and in accordance with Section 6.3.4.10 of the Intellectual Property Policy.

   Whenever the College chooses not to administer Intellectual Property or chooses to cease administering Intellectual Property, such Intellectual Property, subject to any obligations to a sponsor, may be released to the Originator to dispose of as the Originator sees fit.

2. COLLEGE-ASSISTED INDIVIDUAL EFFORT
   1. Inform Intellectual Property Committee. It is the Originator’s duty to promptly inform the Intellectual Property Committee of his/her classified discovery or invention developed as a result of College-Assisted Individual Effort.
   2. Complete the GGC Intellectual Property Disclosure Form. Disclosing Intellectual Property is required for inventions & discoveries made during College-Assisted Individual Effort. Submission of the disclosure form is mandatory by all federal funded agencies. Colleges and Universities faces strict requirements for inventions and discoveries developed during the course of such work. It is important to contact GGC’s Intellectual Property Committee regarding the process. 

   Disclosure is the first step leading to the establishment and protection of Intellectual Property rights necessary to bring about the commercialization of the Technology.

   It is strongly recommended that the Originator completes the GGC Intellectual Property Form as soon as he/she yielded a discovery or invention. The completed form will serve as a legal document establishing record of the date of conception of the invention.

   3. Review and Evaluation by the Intellectual Property Committee.Once the invention is disclosed in confidence, the Intellectual Property Committee will review the disclosure and evaluate the invention’s potential for Intellectual Property protection and commercialization. The committee must establish that the yielded discovery or invention was developed more than purely incidental use of College resources. The Committee’s careful determination is essential. Otherwise, the yielded discovery or invention will be treated as an “Individual-Effort.”

   Ownership of Intellectual Property developed as a result of College-Assisted Individual Effort shall be shared by the Originator and the College. Administration of Intellectual Property in the course of such work shall be with the Originator, unless the Originator and the Committee agree to have it administered by the College. Such Intellectual Property which is administered by the College shall be treated as “College-Assigned Effort.” In this situation, the Originator shall assign to the college his/her share of the ownership in such Intellectual Property, and the determination of revenue sharing as described in Section 6.3.4.10 of the Intellectual Property Policy.

   Originator should cooperate with the College and sign all papers and legal documents deemed necessary to protect and commercialize the Intellectual Property covered. Whenever the College chooses not to administer Intellectual Property or chooses to cease administering Intellectual Property, such Intellectual Property, subject to any obligations to a sponsor, may be released to the Originator to dispose of as the Originator sees fit.

3. INDIVIDUAL EFFORT
   1. Inform Intellectual Property Committee. If the invention was developed in campus through Individual Effort, not falling under the criteria defined in Section 6.3.3.3,  it is the Originator’s duty to promptly inform the Intellectual Property Committee of his/her classified discovery or invention.

      If the invention was developed outside campus and by purely individual-effort, the Originator has no obligation to inform the Intellectual Property Committee of the invention or discovery.

   2. Intellectual Property Committee’s Evaluation. The Committee will give the Originator an opportunity to demonstrate that the “Individual Effort” classification applies to the yielded discovery or invention. Section 6.3.4.2 of the Intellectual Property Policy provides that Disclosure of Intellectual Property is not required in circumstances meeting the criteria described. Once the Committee established “Individual-Effort,” the Intellectual Property ownership shall be fully released to the Originator.

   Assignment of Intellectual Property to the Originator is done through a simple agreement which provides for periodic reports describing the Originator’s administrative activities, generation of payments of royalties, and if appropriate payment to the College of a portion net revenue from the exploitation of Intellectual Property. The Originator shall have responsibility for administration of the Intellectual Property.

   3. Collaborative Individual-Effort. If the yielded discovery or invention was a product of collaborative effort between students or staff not falling under criteria defined in Section 6.3.3.1 though Section 6.3.3.3 (Sponsor-Supported Efforts, College-Assigned Efforts, & College-Assisted Individual Effort), ownership of Intellectual Property is presumed to be shared by the parties involve. To better protect the rights of the parties it is sensible to prepare some legal framework such as below:
   • Prepare a Confidential Non-Disclosure Agreement (NDA). NDA is a legal document for the protection of proprietary information. An NDA is an essential document before any transfer of proprietary information is made from one party to another. In the absence of NDA the transfer of proprietary information, even in a most casual conversation, could legally be considered a public disclosure. Such disclosure could allow the individual or company to whom the information was disclosed to use or transmit to others thereby placing the invention into public domain. Disclosing valuable proprietary information publicly is detrimental to the parties’ interest and could preclude the possibility of obtaining Intellectual Property protection and would even violate federal regulations.

   Please refer to Section 6.3.4.4 regarding Confidentiality.

   There are two types of Non-Disclosure Agreements (NDA): Unilateral or Mutual. In a unilateral NDA (or one-way) only one party agrees to make the disclosure and the other party agrees to be bound to the confidentiality. In a mutual NDA (or both ways) both parties disclose confidential information and both are bound to the confidential information. The bargaining power is more equal and the terms of the agreement are created for the benefit of both parties, not just the party that’s making the disclosures in a mutual NDA.

   NDA is extremely useful in business relationship because it brings parties to have initial discussions without fear of their trade secrets or other confidential proprietary information exposed or stolen.

   • Prepare a Collaboration Agreement. Section 6.3.4.5 of the Manual stipulates about Projects which can result in the development of Intellectual Property jointly owned by the College and other persons or their employees. Protection and commercialization of such joint Intellectual Property can be difficult without extensive cooperation and agreement among the owners. Hence, a Collaboration Agreement is useful to protect the rights of the parties involve. 

   Accordingly, it is important for College personnel involved in collaborative activities that may result in the development of Intellectual Property to advice their immediate supervisors and the Office of Research and Grants of such activities.

   Collaboration Agreement is extremely helpful for collaborators working on a project together. The agreement will spell out the specific terms and conditions of the parties’ working relationship, including the allocation responsibilities and division of revenues derived from the exploitation of the work. Thus, eradicating or minimizing uncertainties down the line. In the absence of a signed Collaboration Agreement, questions may be raised about the ownership and control of the works jointly created, as well as the ability to dispose of any rights in the work. An executed Collaboration Agreement will safeguard uncertainties of the future and in the event that the collaborators separate for any reason.

4. COLLEGE-ASSIGNED EFFORTS
   1. Inform the Intellectual Property Committee your Intention to Assign Intellectual Property to the College. Originator of discoveries or inventions developed in the course of College-Assisted Individual Effort or through Individual Effort may notify the Intellectual Property Committee of his/her intention to waive administration and ownership of Intellectual Property in favor of the College. 
   2. Complete the GGC Intellectual Property Disclosure Form. As in the previous paragraphs, completion the disclosure form is required. In addition, disclosure is the first step leading to the establishment and protection of Intellectual Property rights necessary to bring about the commercialization of the Technology. It is strongly recommended that the Originator completes the GGC Intellectual Property Form as soon as he/she yielded a discovery or invention. The completed form will serve as a legal document establishing record of the date of conception of the invention.
   3. Review and Evaluation by the Intellectual Property Committee. Once the invention is disclosed in confidence, the Intellectual Property Committee will review the disclosure and evaluate invention’s potential for Intellectual Property protection and commercialization.

   Assignment of Intellectual Property shall result to transfer of ownership and administration of Intellectual Property from Originator to the College. In this situation, the Originator assigns to the College his/her share of the ownership rights and such Intellectual Property, and the determination of revenue sharing as described in Section 6.3.4.10 of the Intellectual Property Policy.

   Originator should cooperate with the College and sign all papers and legal documents deemed necessary to protect and commercialize the Intellectual Property covered. The College takes charge in protecting and commercializing your invention.

FORM 1 - GGC Intellectual Property Discloser Form (Confidential)

FORM 2 - Software Development Non-Disclosure Agreement

FORM 3 - Non-Disclosure Agreement

FORM 4 - Mutual Non-Disclosure Agreement

FORM 5 - Petition to Release Intellectual Property (Sample)

FORM 6 - Agreement to Release Intellectual Property (Sample)

FORM 7 - Student Waiver of Intellectual Property (Sample)

FORM 8 - Student Assignment of IP to College (Sample)

FORM 9 - Student Assignment of IP to Company Sponsor (Sample)

 

References:

[1] Yale University: Office of Cooperative Research, “What is the definition of an inventor on a patent, and who determines this?”https://ocr.yale.edu/faculty/frequently-asked-questions/what-definition-inventor-patent-and-who-determines, (Accessed on 6/30/19).

[2] Ibid.

[3] Levenson, David, “Consequences of the Bayh-Dole Act,”6.901 Final Paper, December 12, 2015, page 2.