The Board of Regents (“BOR”) requires each University System of Georgia (“USG”) institution to develop policies and procedures for the administration of BOR Policy 6.3 Intellectual Properties.  

Georgia Institute of Technology (“GIT”) values the creativity and entrepreneurial attitude of members of the GIT community and encourages the protection and licensing of GIT Intellectual Property for commercialization.  GIT hereby establishes the following policy on intellectual property that may result from the activities of GIT employees in the course of their GIT duties or through the use of GIT resources. GIT, through the Office of Technology Licensing (“OTL”), also maintains and updates an Intellectual Property Administration Guidebook (“IP Guidebook”) in observance and furtherance of this policy and its interpretations and applications.  

In the event of conflict between this policy and BOR Policy 6.3, BOR Policy 6.3 shall govern. In the event of a conflict between the IP Guidebook and this policy, this policy shall govern. This policy shall supersede any previous GIT intellectual property policy. 

Georgia Tech Research Corporation (“GTRC”), an affiliated organization of GIT, is the assignee and owner of all intellectual property rights created at GIT.  

All GIT employees, including faculty, staff, affiliates, adjuncts, and students, who are obligated to execute an Intellectual Property Agreement, any updated Agreement or Addendum thereof (collectively as “IP Agreement”) as part of employment, are subject to this policy.  

Students shall be required to execute an IP Agreement only:   

1. When working on a research project funded by an entity other than GIT, the Georgia Tech Foundation, or the Board of Regents, 

2. When employed by GIT, 

3. In the case when the student anticipates or engages in more than incidental use of GIT equipment and/or resources that are not available to the general public, or 

4. When required by the Office of the Provost. Such requirement may be recommended by a faculty member who has students working in faculty-directed research. 

For the purpose of this policy, this assignment requirement does not apply to students who participate in entrepreneurship activities, such as senior design, CREATE-X, InVenture Prize, or use equipment obtained by Student Tech Fees. 

In addition to terms defined in BOR Policy 6.3, the following terms as used in this policy shall mean: 

“Commercialization” means the process of developing marketable intellectual properties and licensing (and/or optioning) the same to parties outside GIT who, in turn, will develop products or services based on them to sell or license to others.  

“Computer Software” (as defined by 48 CFR 2.101) means: (i) Computer programs that comprise a series of instructions, rules, routines, or statements, regardless of the media in which recorded, that allow or cause a computer to perform a specific operation or series of operations; and (ii) Recorded information comprising source code listings, design details, algorithms, processes, flow charts, formulas, and related material that would enable the computer program to be produced, created, or compiled. 

“Creator” means a member of the GIT faculty, staff, or student body who makes an invention, as defined under U.S. patent law, or who participates in the creation of a copyrightable work, under US copyright law, or both. One is a participant in creating a copyrighted work when one makes an original work of authorship (or part thereof) fixed in any tangible medium of expression from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Being an editor or otherwise facilitating a creation does not ordinarily qualify one as a “Creator.” 

“Creator of Record” means any Creator identified on an approved intellectual property disclosure.  When more than one Creator of Record is identified, the contribution allocation shall be determined by the percentage listed in the disclosure.  

“Gross Income” refers to all revenue and/or equity received by GTRC from the transfer, commercialization, or other exploitation of GTRC-owned intellectual property.  

“Intellectual Property Disclosure” refers to a written description of intellectual property disclosed to GTRC, through OTL, and that includes the Creator(s) of Record, contribution percentage, covenants, representations, affirmation, and signatures.

GTRC owns all intellectual property rights resulting from the activities of GIT employees in the course of their GIT duties or through the use of GIT resources and of GIT students as outlined in Section 5.4.1, except in the circumstances described below: 

1. Sponsor-supported Efforts. Ownership of intellectual property rights is governed by the grant or contract terms agreed upon between the sponsor and GTRC and/or GTARC. 

2. Scholarly and Creative Works. Unless Section 5.4.3.A applies, Creators own copyrights to their scholarly and creative works, such as instructional materials, textbooks and associated supplementary material, books, journal articles, and associated Computer Software. GIT and GTRC retain a fully paid up, universe-wide, perpetual, non-exclusive, royalty-free license to use, re-use, distribute, reproduce, display, and make derivative works of all scholarly and creative works for the educational, research, and administrative purposes of GIT and/or GTRC. 

3. Individual Activities. Creators own all intellectual property rights arising from their individual activities, if (a) these activities are outside Creators’ GIT duties or assignments; and (b) there is no use, except in a purely incidental way of GIT resources in the creation of such intellectual property; or such resources are available without charge to the public. External consulting is considered an individual activity that is outside the Creator’s GIT duties or assignments.   

4. Special Cases. Ownership rights to intellectual property developed under any circumstances other than those listed in Section 5.4.3. 1-3 of this policy shall be determined on an individual basis and approved by the General Manager of GTRC (or their designee) or any other designated representative approved by the President of GIT. 

All GIT employees, including faculty, staff, affiliates, adjuncts, and students, as a condition of employment with GIT, shall execute the IP Agreement, assigning all rights, title, and interest, to the extent prescribed in this policy, in any intellectual property to GTRC.  

GTRC may waive its right to assert intellectual property claim under certain situations upon written request from Creator(s). 

GIT students own all intellectual property rights resulting from their academic and individual activities unless required to execute an IP Agreement as described in Section 5.4.1 of this policy. For Copyrighted Material and Computer Software that are (a) created by a student in furtherance of or in connection with the student’s studies or activities at GIT during their matriculation at GIT and (b) that are not subject to a sponsored project or other agreement giving third-party rights, the student hereby grants to GTRC and GIT a fully paid up, universe-wide, perpetual, non-exclusive, royalty-free license to use, re-use, distribute, reproduce, display, and make derivative works of all students-created Copyrighted Material and Computer Software for the educational, research, and administrative purposes of GIT and/or GTRC.

This section is to further clarify rights and responsibilities on ownership of Computer Software created during activities described as below: 

1. Software created in classes: Students and GIT staff/faculty own the software they create as part of participating in classes, including, but not limited to, instructional classes (such as classes that teach programming or use programming as part of their exercises), project-based classes (such as classes associated with senior design, capstone, and vertically integrated projects), and entrepreneurship classes and programs (such as classes associated with CREATE-X and InVenture Prize). GIT staff/faculty shall declare with OTL the ownership of such software that they intend to distribute, license, sell, or otherwise use for non-GIT related purposes. Such registration shall include a description of the circumstances of its creation including but not limited to the name(s) of creator(s), class information, and date of creation. Students are exempt from this requirement. 

2. Software created outside of classes: Computer Software created by students is owned by the student if (a) there is not a more than incidental use of GIT equipment and/or resources that are not available to the general public without charge; or (b) the software is not covered by the other sections of this policy.  

3. Software created as part of teaching: Students and GIT staff/faculty own the software they create as part of teaching and instruction. Examples of such software that GIT staff/faculty may create as part of class administration include, but are not limited to, practice exercises, interactive web sites, class forums, grading software, and plagiarism detection software.  For the purposes of education within the GIT community, GIT and GTRC retain a fully paid up, perpetual, universe-wide, non-exclusive, royalty-free license to use, re-use, distribute, reproduce, display, make derivative works of said software. GIT staff/faculty shall register with OTL the ownership of such software that they intend to distribute, license, sell, or otherwise use outside the GIT community. Such registration shall include a description of the circumstances of its creation including but not limited to the name(s) of creator(s), class information, and date of creation. Students are exempt from this requirement. 

4. Software created as part of sponsored research: Computer Software created as part of sponsored research is governed by the grant or contract terms agreed upon between the sponsor and GTRC and/or GTARC. Computer Software sponsored by GIT and/or GTRC internally is owned by GTRC. GTRC-owned Computer Software may be distributed by the creator(s) to others for academic and research purposes only, provided that proper copyright notice and disclaimers are included. Any other release or distribution of said Computer Software must be coordinated with OTL. OTL will provide timely guidance for distribution licenses and will arrange for copyright registration when appropriate. Distribution for internal GIT and/or GTRC purposes need not be coordinated with OTL and is permissible with the written approval of any Creator of the software. 

5. Software created with support of gift funds: Students and GIT staff/faculty own the software they create as part of efforts supported solely by gift funds. For the purpose of this policy, gift funds include both general and designated gifts. Creators are encouraged to release such software in the public domain with appropriate disclaimers and copyright notices. GIT and GTRC retain a fully paid up, perpetual, universe-wide, non-exclusive, royalty-free license to use, re-use, distribute, reproduce, display, make derivative works of said software. GIT staff/faculty shall declare to OTL such software that they intend to distribute, license, sell, or otherwise use outside the GIT community. Such registration shall include a description of the circumstances of its creation including but not limited to the name(s) of creator(s), funding information, and date of creation.  In the case where software is created with support of mixed funding sources, Creators must establish and agree to a mechanism to document the source of funds for each portion of the software created. When applicable, ownership of the creation is determined by the terms and conditions of the funding source.  

6. Software created during individual activities: Where Computer Software is created during faculty/staffs’ individual activities, the Creator(s) shall own the software, if (a) these activities are outside Creators’ GIT duties or assignments; and (b) there is no use, except in a purely incidental way, of GIT resources in the creation of such software; or such resources are available without charge to the public. For the purpose of this policy, external consulting is considered an individual activity that is outside the Creator’s GIT duties or assignments. 

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. 

3. 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. 

4. 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. 

5. 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. 

6. 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. 

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

8. 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. 

9. 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.  

10. 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. 

To encourage further development of intellectual property and as authorized by BOR, OTL shall use the following income distribution mechanism.  

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 Creator(s) of Record. Thereafter, the net income, computed on a cumulative basis, shall be distributed as follows: 
  

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, evaluation costs, marketing costs, reproduction, mailing, consumables, and unreimbursed development costs, etc.), shall be distributed annually by GTRC to the Creator(s) of Record and/or unit.  

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. 

In the event that equity in a company is offered to and accepted by GTRC as part of consideration for a license to technology and/or to any other intellectual property, GTRC, through OTL, and the Creator(s) of Record shall agree in writing on how the Creator(s) of Record will receive equity shares and other related matters, provided that the Creator(s) of Record have made proper disclosures to and received approval from the Conflict of Interests review group.   

Subject to the company’s subscription or shareholders agreement provisions requiring that GTRC not receive shares with an intent to sell, upon any sale of the equity shares retained by GTRC, the net proceeds received therefrom, will be distributed to the unit, to the Creator(s) of Record, and to GTRC according to the mechanism described in this policy. 

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 according to the terms of a fully executed agreement. 

For Copyrightable Materials (as defined in BOR Policy 6.3.2.4)  that are owned by GTRC, the Creator(s) is authorized to make modifications and to prepare derivative works, and to use and present said derivative works, whether or not the Creator(s) is still employed by GIT, subject to the GIT Conflict of Interest Policy. 

GIT has the right to require that the quality and freshness of Copyrighted Materials used in its programs be maintained. It will make every reasonable effort to involve faculty, staff, and student Creator(s) of copyrightable works in on-going quality assurance and improvement of the works they created.  

Members of the GIT community shall respect and observe the rights of other copyright owners. 

1. Trademark. Names and Trademarks associated with and belonging to GIT may not be used except by permission of the Office of Institute Communications, acting on behalf of the Georgia Tech Foundation. Members of the GIT community may identify themselves as such, in ways customary in scholarly work, but any such use shall seek to avoid inappropriate implications of sponsorship or endorsement by GIT, and where necessary, include specific disclaimers. 
2. Trade Secrets. OTL may include Trade Secrets (defined in BOR Policy 6.3.2.6.) provisions in patent license agreements. Because of the potential for conflict with the GIT’s policies of requiring the free and open publication of academic research, GIT will not generally enter into agreements protecting stand-alone Trade Secrets.  

Changes in Policy. This policy shall be reviewed every three years and changes may be made through GIT policy change process.