Intellectual property includes publication rights, patent rights, trade secrets, copyright to publications, and computer software.
By public law, rights to intellectual property are retained by Georgia Tech when the sponsor is a federal government agency with the government receiving rights for its own use. Until recently, GTRC automatically gave industrial sponsors the same rights conveyed to the government, i.e., nonexclusive royalty free license to practice the technology; however, such rights granted without any consideration frequently severely limited the marketing potential of the technology and therefore its value to Georgia Tech. In contrast, granting such rights to the government seldom, if ever, diminishes potential value since the government does not market commercial products. Consequently, GTRC standard contract terms now provide for GTRC to retain title to intellectual property developed during the performance of sponsored research and to give the industrial sponsors a right of first refusal to negotiate for the right to use the technology. The release of intellectual property has the potential to adversely impact ongoing or future research at Georgia Tech and could result in Georgia Tech being prohibited from performing further research in the area covered by the intellectual property. Any agreement granting intellectual property rights to a sponsor or a third party normally provides for Georgia Tech to reserve the right to practice the intellectual property for educational and research purposes.
When assessing what further consideration (i.e., fee), if any, should be sought from a sponsor who wishes to exercise its right of first refusal to negotiate for the right to use the technology, the factors which are taken into account include:
- Is the proposed research further development of work previously undertaken at Georgia Tech?
- If so, what is the current state of development, what investment has been made by Georgia Tech or any third party to date, and what is the relationship of that investment to the currently proposed industrial support?
- What is the commercial potential of the anticipated innovation?
- Are any pre-existing rights to the intellectual property held by any other party?
Disclosure of Intellectual Property
The Georgia Tech Employment Agreement and Intellectual Property Policy, as stated in the Georgia Tech Faculty Handbook, establish the obligation that Georgia Tech faculty, staff, and students must promptly disclose to the Office of Technology Licensing (OTL/GTRC) any intellectual property conceived during the performance of their work. Intellectual property is recognized by GIT and GTRC as patentable materials, copyright materials, trademarks, software, and trade secrets, whether or not formal protection is sought.
Once disclosure has occurred, the Office of Technology Licensing reviews the disclosure for completeness and for obligations to sponsors of the research. Upon compliance with pre-existing commitments to sponsors, the OTL evaluates the technology for commercial potential, seeks the appropriate intellectual property protection, and markets the technology through various mediums.
After an industry partner is identified and an agreement is executed by the OTL, inventors/developers of the technology share in the revenues generated by the license in accordance with the Institute’s Intellectual Property Policy.
For more information, please see The Office of Technology Licensing