Policy Manual > Academic Affairs > Employment Policies, Procedures, and Benefits > Faculty Professional Development Opportunities > Faculty Research > Intellectual Property Policy and Procedures
Policy: Board of Regents Policy Manual Section 6.3.1, http://www.usg.edu/policymanual/section6/
Form can be found here: http://intranet.gcsu.edu/academic-affairs/policies-procedures-and-practices-manual-forms
I. Policy Overview
The purpose of this Intellectual Property Policy is to encourage and recognize research and innovation by members of the University Community, clarify ownership of intellectual property rights, create opportunities for public use of University innovations, and provide for the sharing of revenue with the creators of intellectual property.
This Intellectual Property Policy serves to clarify the circumstances under which intellectual property ownership resides with the creator or with the University and aims to establish incentives for the continued development of intellectual property. The Policy is intended to fairly compensate faculty and staff for their role in developing Intellectual Property using University resources; to compensate departments and colleges for the loss of faculty and staff services due to approved research and development activities; and to create additional funding and incentives for research and development across the university. The distribution guidelines set forth in Article VIII, below, are based on typical practices at comparable institutions but may be varied upon the recommendation of the Intellectual Property Committee.
Payment by the University of expenses associated with obtaining copyrights, licenses or patents will also be based upon the recommendation of the Intellectual Property Committee, subject to availability of funds and the approval of the Vice President for Academic Affairs and may be subject to full or partial reimbursement by the individual creator(s) of the Intellectual Property prior to the distribution of Net Equity or Net Income
Intellectual Property rights accruing to the University or its employees are in all cases subject to state and federal copyright and patent laws and pre-existing rights of third parties. This Intellectual Property Policy does not apply to performances by third parties unless otherwise agreed at the time of engagement
The Intellectual Property Policy of the University will operate under the following three principles. Fairness-The policy must strive to be fair to all parties involved, and ownership must clearly be determined by the amount the University contributes to the Intellectual Property's creation. Incentives and Rewards-the policy must reward the inventor/creator in as many ways as possible. Do no harm-the policy clearly must not have the perception of creating barriers to faculty and staff creativity. The circumstances under which Intellectual Property is created determines ownership rights to such intellectual property.
Following the three guiding principles, the University must determine whether the Intellectual Property falls into one of the three categories (Inventor/Creator-Owned, University- Owned, or Jointly- Owned with Third Parties). Inventor/Creator-Owned Intellectual Property is defined as property that was developed without substantial university support and infrastructure. Inventor/Creator Owned Intellectual Property is solely controlled by the inventor/creator, and the university has no rights of ownership. University-Owned Intellectual Property is defined as property that was developed with substantial university support and infrastructure. University-Owned Intellectual Property is Intellectual Property to which the university is entitled a share of the royalties and benefits of the property as determined by the Intellectual Property policy. Intellectual Property Jointly-Owned with Third Parties is defined as property that the university substantially supported for a portion of the development time. Ownership, royalties, and benefits from University-Owned Intellectual Property and Intellectual Property Jointly-Owned with Third Parties must be determined by the University Intellectual Property Committee. Some examples of each category are:
University - Owned
Jointly - Owned with Third Parties
Any property released to the inventor/creator by the university.
Any Intellectual Property developed by faculty and staff that the university patents, subject to agreement on distribution of proceeds. See Article VIII.
Additional patents from continuation of research initiated at another institution.
Textbooks developed by a faculty member with an outside publisher.
Any Intellectual Property developed by faculty or staff and posted on a university website, subject to pre-existing copyrights
Co-authored work sponsored by the university and outside the university.
Recordings of performances not sponsored by the university and not recorded on university property.
Recordings of performances sponsored by the university or on university property.
Outside sponsored research (federal, state, corporate and private sponsors, etc) developed at the university.
Lecture notes, syllabi, assessment instruments and demonstration materials developed for classes outside the university
Syllabi, assessment instruments and demonstration materials developed for classes taught at the university.
Intellectual property developed by faculty and staff with a third party outside the university.
Intellectual Property created by outside consulting of faculty and staff.
Works for hire done under contract with the university where the university retains ownership rights.
The University recognizes and encourages the publication of scholarly works as an integral part of teaching, research, and service. The University acknowledges the rights held by individuals who publish articles, pamphlets, books, and other works created through individual effort and initiative that are protected by copyright. The University also recognizes that some publications may result from work supported, either partially or completely, by the University. Generally, while the University retains the rights to Intellectual Property developed at the University, the University releases rights in scholarly works, as defined in this Policy, to the creators of such works.
Patentable inventions often come about because of the activities of faculty, staff, or students who have been aided, wholly or in part, through the use of the University's resources and/or through the course of their employment by the University. It becomes significant, therefore, to insure the utilization of such intellectual property for the public good and to expedite its development and marketing. The rights and privileges, as well as the incentives, of the Intellectual Property creator must be preserved so that the creator's abilities and those of other members of the University community may be further encouraged and stimulated.
For the purpose of applying and interpreting this Policy, certain terms shall have the meanings as indicated below:
"Biological Materials" shall include, but are not limited to, chemical compounds of biological origin, drugs, mutants, genetically engineered organisms, antibodies, hybridomas, cell lines, sera, supernatants, vectors, antigens, cDNAs, ESTs, and SNPs, and chemical compounds including enzymes and derivatives.
"Copyrighted Materials" shall include but not be limited to: (1) books, journal articles, texts, glossaries, bibliographies, study guides, laboratory manuals, syllabi, tests, and proposals; (2) lectures, musical or dramatic compositions, unpublished scripts; (3) films, filmstrips, charts, transparencies, and other visual aids; (4) video and audio tapes or cassettes, compact disks, DVDs; (5) live video and audio broadcasts; (6) programmed instructional materials; (7) mask works; and (8) software and other subject matter or works 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.
"Creator" means the individual or group of individuals who authored or were otherwise responsible for the creation of the Intellectual Property.
"Intellectual Property" shall be deemed to refer to Patentable Inventions, Biological Materials, Copyrighted Materials, Software and Trade Secrets, whether or not formal protection is sought. Trademarks are specifically excluded from this definition.
"Mask Work" means a series of related images, however fixed or encoded: (1) having or representing the predetermined, three-dimensional pattern of metallic, insulating, or semi-conductor material present or removed from the layers of a semiconductor chip product; and (2) 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.)
"Net Equity" means the value of the equity received by the University as a result of transferring rights in the Intellectual Property, less the University's out-of-pocket expenditures (including legal fees) directly attributable to protecting, developing, and transferring that Intellectual Property.
"Net Income" means the gross monetary payments the University receives as a result of transferring rights in the Intellectual Property, less the University's out-of-pocket expenditures (including legal fees) directly attributable to protecting, developing, and transferring that Intellectual Property.
"Novel Plant Variety" means a novel variety of asexually reproduced plant. (See 7 U.S.C. § 2321 et seq.)
"Patentable Inventions" shall be deemed to refer to subject matter (a new, nonobvious, useful process, machine, manufacture, composition of matter or improvement thereof), which reasonably appears 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.
"Patentable Plant" means an asexually reproduced distinct and new variety of plant. (See 35 U.S.C. § 161.)
"Scholarly Work" means books, articles and other publications, artistic creations, literary manuscripts, visual and auditory creations, and musical works, irrespective of their medium of storage or presentation. The former items are meant to include software, computer programs, and databases, but only if they are accessory to or part of a scholarly text. Textbooks and related software developed as a Specific University Assignment are not considered a Scholarly Work for the purpose of this definition.
"Significant Use of University Resources" and "Substantial University Support" refer to the use of University resources that is over and above the typical range of resources provided by the University in the ordinary course of employment.
"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 or related data that, in actual or modified form, is capable of causing a computer or computer system to perform specified functions.
"Specific University Assignment" means Intellectual Property specifically ordered or commissioned pursuant to a written, signed agreement between the University and Creator.
"Trademarks" shall include all trademarks, service marks, trade names, seals, symbols, designs, slogans, or logotypes developed by or associated with the University. (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: (1) 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 (2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. (See O.C.G.A. § 10-1-761.)
This Policy addresses both individual and University Intellectual Property rights, and applies to all persons creating Intellectual Property at Georgia College & State University. The Policy applies to students and all university employees, including but not limited to, faculty and staff. The Policy also extends to persons receiving compensation or funding from the University or funds administered by the University.
Individuals covered by this Policy shall treat Intellectual Property in a manner that is consistent with Trade Secret laws. The Creator shall execute such declarations, assignments, or other documents as may be necessary in the course of evaluating and protecting the ownership rights of Intellectual Property to ensure that title in such Intellectual Property shall be held by the University, or by such other parties as may be appropriate under the circumstances. The Creator shall disclose Intellectual Property to the University as early as possible in the creation process. Faculty members covered by this Policy must disclose in their Individual Faculty Report all Intellectual Property they may be developing. The Creator must also disclose a brief summary of the Intellectual Property to the Creator's supervisor.
V. Intellectual Property Committee
The Intellectual Property Committee shall be appointed by the President and shall consist of nine (9) members, including the following: three (3) members from the College of Arts & Sciences; one (1) member from the College of Business; one (1) member from the College of Education; one (1) member from the College of Health Sciences; one (1) member from the Library and Instructional Technology Center; and one (1) representative each from the Office of Administrative Services & Campus Operations and the Office of Legal Affairs. The Committee will nominate a Chairperson, subject to the approval of the President. Committee appointments will be for three (3) years, provided, however, that in the first year, one-third (1/3) of the members shall be appointed for a term of one (1) year, one-third (1/3) of the members shall be appointed for a term of two (2) years, and one-third (1/3) of the members shall be appointed for a term of three (3) years. Members of the Committee may be appointed to serve consecutive terms. In the event any seat on the Committee is vacated prior to the expiration of the normal term, the President shall appoint a successor to fill the remaining term in accordance with the procedures outlined above. The Committee shall meet as needed and shall report to the Vice President for Academic Affairs or his or her designee.
VI. Administrative Process
Prior to the completion of the creation of Intellectual Property, or as early as possible in the creation of Intellectual Property, the Creator shall seek a determination of whether the development of the Intellectual Property involves significant use of university resources and may be patented or licensed by the university, by fully and openly disclosing the facts surrounding the creation of Intellectual Property to the Creator's Department Chair or Director who shall advise whether a Disclosure Form should be forwarded to the Office of the Vice President for Academic Affairs and, if the Intellectual Property involves grant-sponsored research, to the Office of Grants and Sponsored Projects for informational and compliance purposes.
Once the Office of the Vice President for Academic Affairs has received the Intellectual Property Disclosure Form from the Creator, the University's interest in patenting and/or licensing the disclosed Intellectual Property shall be determined in a timely fashion by the Intellectual Property Committee. After preliminary evaluation by the Chair of the Intellectual Property Committee and the Dean of the Creator's College, the Committee will initiate one or more of the following actions within forty-five (45) business days of receiving the disclosure:
When the disclosure is referred to the Committee for a recommendation, the Committee shall review the disclosure and, if appropriate, hear an oral presentation by the Creator. The Committee may use appropriate ad hoc members, including external agencies, to assist in evaluating the Intellectual Property.
The Committee shall recommend whether the University should claim an interest in the Intellectual Property, based on a determination that the disclosed Intellectual Property is novel, useful, nonobvious and/or has potential commercial value. Within thirty-five (35) business days of the disclosure being submitted to the Committee, the Committee will make a recommendation to the Vice President for Academic Affairs regarding whether the University should pursue development of the Intellectual Property. If the Committee requires additional time, it shall request in writing such additional time from the Vice President for Academic Affairs, including a justification for the request. Such additional time must have the agreement of the involved parties and shall not exceed an additional thirty-five (35) business days.
The Vice President for Academic Affairs will consider the recommendation of the Committee and respond to the Creator, in writing, whether the University intends to pursue development of the Intellectual Property. The Vice President for Academic Affairs' determination shall be communicated to the Creator no later than thirty-five (35) business days from the Vice President for Academic Affairs' receipt of the Intellectual Property Committee's report. If the Vice President for Academic Affairs decides that the University will not pursue development of the Intellectual Property, or such agreed upon decisions are not made or responded to in writing during the specified time period, or a mutually agreeable extended time period, the University shall have waived its rights to pursue development of the Intellectual Property
VII. Investment in Business Entity
A Creator who holds an investment in a business entity that intends to license and commercialize University-Owned Intellectual Property shall disclose his/her investor status. Written approval of the Creator's Department Chair, Dean, and Vice President (or in the case of a staff member, the Creator's supervisor, division head and Vice President, as applicable) shall be obtained before the Intellectual Property is licensed. A Creator is encouraged to limit his/her role in such business entity to that of scientific or technical founder, member of a scientific advisory board, or consultant. A Creator should not serve on such entity's Board of Directors or as an officer. When necessary, a Creator may assume such roles only upon the written approval of the applicable Department Chair, Dean, and Vice President (or in the case of a staff member, the Creator's supervisor, division head and Vice President, as applicable). A Creator who holds an investment in an entity shall not negotiate nor attempt to influence the licensing terms between the University and such entity, unless the University consents.
VIII. Distribution of Proceeds
Distribution of proceeds from patenting or licensing Intellectual Property will be weighted based on the contribution of the University to the development of the entity. With respect to University-owned property subject to an agreement on distribution of proceeds with faculty or staff members, the following guidelines will apply, but may be varied by agreement of the parties upon recommendation of the Intellectual Property Committee and with the approval of the Vice President for Academic Affairs.
A) When income is derived from the commercialization of Intellectual Property created by a faculty member, Net Income will be distributed as follows.
First $20,000 of Accumulated Net Income
Accumulated Net Income Over $20,000
B) When equity is derived from the commercialization of Intellectual Property created by a faculty member, Net Equity will be distributed as follows.
With respect to income or equity derived from the commercialization of Intellectual Property created by a staff member who is not employed within a college, the staff member's division/unit will also receive the 10% allocable to the college in the case of a faculty member.
The Intellectual Property Committee may recommend additional monetary incentives for filing a provisional patent and/or obtaining a patent award from the U.S. Patent Office.
If a Creator receives extraordinary compensation from or has a significant equity ownership interest in the company to which the Intellectual Property is licensed, then such Creator shall not participate in any distribution of proceeds. Standard consulting fees shall not be deemed to be extraordinary compensation, but shall be disclosed to appropriate University officials in accordance with the University's Conflict of Interest Policy.
When the Intellectual Property is the result of joint efforts, the Creator's share of Net Income or Net Equity will be divided equally among the Creators, unless a written agreement, signed by all the Creators, provides for a different distribution and is filed with the University prior to the first distribution of Net Income or Net Equity.
The President, in consultation with the Intellectual Property Committee and the Dean(s) of the appropriate College(s), may change the distribution of Net Income or Net Equity to the Creator's Department/Unit and/or College, if necessary, due to organizational changes or structures at the University, or if the Creator moves among units at the University.
Disputes regarding the application of this Policy may be appealed, in writing, to the President. Appeals may be referred to the chair of the Intellectual Property Committee, which will make a recommendation to the President on the appeal within thirty (30) business days of its receipt of the appeal, who shall issue a final decision. If an individual wishes to appeal the decision of the President, or if the decision is not made within the specified time period, the individual may appeal to the Board of Regents in accordance with Article IX of the Bylaws of the Board.
Nothing in this Policy shall be construed as affecting the rights of a Creator to publish the results of a scientific work, except that the Creator must agree to observe a period of delay in publication or external dissemination if the University so requests, and such a delay is necessary to permit the University to secure protection for any Intellectual Property disclosed to it by the Creator.
XI. Prevailing Policy
In the event of a conflict between the Georgia College & State University Intellectual Property Policy and any policy of the Board of Regents of the University System of Georgia, the latter shall prevail.
XII. Heirs and Assigns
The provisions of this Policy shall inure to the benefit of and be binding upon the heirs and assigns of those individuals covered by this Policy.
XIII. Changes in Policy
This Policy shall be reviewed periodically and amendments may be recommended, as appropriate, by the Intellectual Property Committee. This Policy may be changed with the approval of the University Senate through its committee process, subject to the final approval of the President.
Failure to comply with the provisions of this Policy is a violation of University policies and may result in discipline of an individual in accordance with applicable University policies and procedures.
Form can be found here: http://intranet.gcsu.edu/academic-affairs/policies-procedures-and-practices-manual-forms