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:

 Net $500 K$501 K - $1,000 K> $1,000 K

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.

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Compliance and Policy Management
760 Spring Street N.W. Suite 324
Phone: 404-385-0731