5.4.5 Intellectual Property Administration

5.4.5 Intellectual Property Administration abruneau3 Thu, 06/26/2014 - 18:07
  1. Organization. The following groups are responsible for managing GIT intellectual property. 
    1. GTRC is the owner of all GIT created intellectual property rights and the contracting party to all intellectual property provisions and/or agreements, except for trademarks where the Georgia Tech Foundation is the contracting authority.  
    2. The Office of Technology Licensing (“OTL”) manages intellectual property disclosures and protections, licenses GIT created intellectual property, and administers income distributions. OTL should share with Creator(s) of Record a copy of the executed licensing agreement(s) in a timely manner, provided that confidentiality is preserved. 
    3. The Intellectual Property Advisory Committee (“IP Advisory Committee”) is appointed by the President or their designee 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 the General Counsel; one representative shall be selected from GTRC; and one or more faculty representative(s) shall be selected from each of the colleges and the Georgia Tech Research Institute (GTRI) 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 or more representative shall be selected from the student body. The President or their designee shall appoint the Chair of the Committee to serve as needed. The role of the IP Advisory Committee is to: 
      1. Advise the President or their designee and General Manager of GTRC on policy matters relating to this policy, 
      2. Propose amendments considered necessary to this policy, 
      3. Advise on the settlement of internal disputes, and 
      4. Advise on deviations from this policy. 
  2. Disclosure. Creators must promptly and fully disclose to OTL any intellectual property resulting from the activities of GIT employees in the course of their GIT duties or through the non-incidental use of GIT resources. Creators also have an ongoing obligation to update the disclosure including adding or deleting Creators or modifying contribution percentages. Details about the required disclosure can be found in the IP Guidebook. Failure to disclose may result in a breach of sponsored research agreement obligations, loss of potential royalties, etc. 

  1. Evaluation Decisions. OTL may develop the intellectual property for commercialization, may release it to the Creator(s) if OTL decides not to continue managing a given intellectual property and such release is permitted by law, or OTL may take such other actions as are determined to be in the public interest. Details about decision making and notifications can be found in the IP Guidebook.  Within 60 calendar days from disclosure by the Creator(s), OTL will inform the Creator(s) as to whether they will file a provisional patent application. If OTL decides not to file a provisional patent application, refile a new provisional patent application, or does not inform the Creator(s) within 60 days, OTL shall provide an evaluation to the Creator(s) as to whether the disclosed intellectual property could be released back to Creator(s). If yes, OTL shall initiate the release process. Within 10 months of the filing of a provisional application, OTL will inform the Creator(s) as to whether they will convert it to a non-provisional filing. If OTL decides not to file a non-provisional application or does not inform the Creator(s) within 10 months, upon request, the intellectual property may be reverted to the Creators under the terms of any agreements that supported or are related to the work. In the case of an invention resulting from a government-sponsored project, where OTL cannot or chooses not to retain ownership, rights would be retained by the government unless explicitly requested by the Creator(s). In such cases, the Creator(s) may request and be granted rights by the sponsoring agency to an invention made under such award. 

  1. Questions related to GTRC ownership. In the event there is a question as to whether GTRC has a valid intellectual property ownership claim arising from a situation not described in this policy, OTL shall provide the Creator with a written decision supported by a summary of rationale within 30 calendar days. 

  1. Licensing to GIT Creators. OTL may, at its discretion and if consistent with the public interest, license intellectual property to the Creator(s) on an exclusive or non-exclusive basis. The Creator(s) may be required to assume the cost of statutory protection. Agreements with Creators will be subject to review and approval of conflict-of-interest issues in accordance with applicable GIT policies. 

  1. Consulting Agreements. Consulting agreements are agreements between GIT employees and a private third party. GIT cannot provide advice to employees regarding private or non-GIT matters. However, GIT employees should carefully review such agreements to ensure the terms are not in conflict with their employment agreement with GIT or obligations to GIT and/or GTRC nor in conflict with any of the GIT’s policies, including but not limited to this policy. 

  1. Administrative Guidelines and Procedures. OTL shall develop and maintain the IP Guidebook providing operational guidelines and procedures for the administration of GIT intellectual property.  

  1. Appeal. Any decisions made by GTRC and/or OTL may be appealed to the GTRC Board of Trustees. The General Manager of GTRC shall facilitate the appeal process. The GIT IP Advisory Committee shall serve as an advisory body to the GTRC Board of Trustees in reviewing and deciding on the merits of any appeal. 

  1. Maintenance Fees. OTL will inform Creator(s) 60 calendar days before the due date if they intend to abandon the maintenance for a patent.  Creator(s) may have an option to take over the patent by paying the future patent costs.  

  1. Alternative Disposition of Rights. Unless the terms of any agreements that supported or governed the work prohibit and notwithstanding other provisions in this policy (including but not limited to the IP Agreement), a Creator (acting collectively when there are more than one) is free to place an invention or a creation in the public domain upon written notification to GTRC signed by all Creators of Record. GTRC will not assert intellectual property rights when Creator(s) have placed their inventions or creations in the public domain.