312.02.03 Intellectual Property Policy Archived - 8 May 1997

A. Preamble

Georgia State University is dedicated to teaching, research, and the extension of knowledge to the public. The faculty recognizes as two of its major objectives, the production of new knowledge and the dissemination of both old and new knowledge. Inherent in these objectives is the need to encourage the development of the new and useful devices and processes, the publication of scholarly works, and the development of computer software. Such activities (1) contribute to the professional development of the faculty, staff or students involved, (2) enhance the reputation of the institutions concerned, (3) provide additional educational opportunities for participating students, and (4) promote the general welfare of the public at large.

Patentable inventions and materials often come about because of activities of faculty, staff or students who have been aided wholly or in part through the use of resources of the University. It becomes significant, therefore, to insure the utilization of such inventions for public good and to expedite their development and marketing. The rights and privileges, as well as the incentive, of the inventor or creator must be preserved so that his or her abilities and those of other faculty, staff or students of the University may be further encouraged and stimulated.

The University recognizes and encourages the publication of scholarly works as an integral part of the processes of teaching, research and service. The University acknowledges that faculty, staff or students regularly prepare for publication, usually through individual effort and initiative, articles, pamphlets, books and other scholarly works that may be subject to copyright and may generate royalty income for the author. Publication may also result from work supported either partially or completely by the institution. With the advent of innovative techniques and procedures, the variety and number of materials (which might be) created in a university community have increased significantly, causing the ownership of such copyrightable materials to become increasingly complex.

The University recognizes the need for enhanced development and dissemination of software technology as a means of expressing both old and new knowledge. The University is aware of the dynamic nature of software and that the value of intellectual property comes from the ability of its owner to control its use and that such value is directly related to the degree of protection it enjoys under the law; the University will protect such expressions of knowledge by the utilization of appropriate intellectual property laws and the creation of comprehensive software technology transfer policies and procedures.

By action of the Board of Regents of the University System of Georgia, the ownership of Intellectual Property created by the faculty, staff or students of Georgia State University, with the exception of trademarks, has been transferred to the Georgia State University Research Foundation, Inc.

The foregoing considered, Georgia State University does hereby establish the following policy with respect to the development, protection, and transfer of rights to Intellectual Property resulting from the work of its faculty, staff or students.

B. Definitions

"Intellectual Property" shall be deemed to refer to patentable materials, copyrighted materials, trademarks, software, and trade secrets, whether or not formal protection is sought.

"Patentable Materials" shall be deemed to refer to items other than software which reasonably appear to qualify for protection under the patent laws of the United States (see UNITED STATE CODE ANNOTATED, Title 35, Section 101) or other protective statutes, including Novel Plant Varieties and Patentable Plants, whether or not patentable thereunder.

"Copyrighted Materials" shall include the following: (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; (5) live video and audio broadcasts; (6) programmed instructional materials; (7) mask works; and (8) other materials or work other than software which qualify for protection under the copyright laws of the United States (see UNITED STATES CODE ANNOTATED, Title 17, Section 102 et seq.) or other protective statutes whether or not registered thereunder.

"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.

"Trademarks" shall include all trademarks, service marks, trade names, seals, symbols, designs, slogans, or logotypes developed by or associated with the University (see UNITED STATES CODE ANNOTATED, Title 15, Section 1127).

"Trade Secrets" means information including, but not limited to, technical and nontechnical data, a formula, a pattern, a compilation, a program, a device, a method, a technique, a drawing, a process, financial date, financial plans, product plan, or a list of actual or potential customers or suppliers which: (i) 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; (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. (See O.C.G.A. 10-1-761.)

"Patentable Plant" means an asexually reproduced distinct and new variety of plant (see UNITED STATES CODE ANNOTATED, Title 35, Section 161).

"Mask Work" means a series of related images, however fixed or encoded: (i) having or representing the predetermined, three dimensional pattern or metallic, insulating, or semi-conductor material present or removed from the layers of a semiconductor chip or duct; and (ii) 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 UNITED STATES CODE ANNOTATED, Title 17, Section 901).

"Novel Plant Variety" means a novel variety of sexually reproduced plant. (See UNITED STATES CODE 7 U.S.C. 2402 et seq.)

C. Determination of Rights and Equities in Intellectual Property

1. Sponsored-Supported Efforts

The grant or contract between the sponsor and the University, under which Intellectual Property is produced, may contain specific provisions with respect to disposition of rights to these materials. The sponsor (1) may specify that the materials be placed in the public domain, (2) may claim reproduction, license-free use, or other rights, or (3) may assign all rights to the University. In those cases where royalty income is realized by the University, the inventor or creator may appropriately share in the royalty income. The nature and extent of inventor or creator participation in royalty income, however, shall be subject to sponsor and University regulations.

2. University Assigned Efforts

Ownership of Intellectual Property developed as a result of assigned University effort shall reside with the University, however, sharing of royalty income with the inventor or creator is authorized as an incentive to encourage further development of Intellectual Property. The nature and extent of inventor or creator participation in royalty income, however, shall be subject to University regulations.

3. University Assisted Individual Effort

Ownership of Intellectual Property developed by faculty, staff or students of the University where the University provides support of their efforts or use of University resources in more than a purely incidental way (unless such resources are available without charge to the public) shall be shared by the inventor or creator and the University. The nature and extent of inventor or creator participation in royalty income, however, shall be subject to University regulations.

4. Individual Effort

Ownership rights of Intellectual property developed by faculty, staff or students of the University shall reside with the inventor or creator of such Intellectual Property provided that: (1) there is no use, except in a purely incidental way, of University resources in the creation of such Intellectual Property (unless such resources are available without charge to the public); (2) the Intellectual Property is not prepared in accordance with the terms of an University contract or grant; (3) the Intellectual Property is not developed by faculty, staff or students as a specific University assignment. The general obligation to produce scholarly and creative works does not constitute a specific assignment for this purpose. The nature and extent of the use of University resources shall be subject to University regulations and shall be determined by the University.

5. Other Efforts

Ownership rights of Intellectual Property developed under any circumstances other than those listed above shall be determined on an individual basis and approved by the Vice President for Research and Sponsored Programs of the University. The nature and extent of inventor or creator participation in royalty income, however, shall be subject to University regulations.

D. University Procedures

1. The University has developed procedures for the administration of this Intellectual Property Policy. The President shall appoint an Intellectual Property Committee, consisting of no fewer than three, nor more than nine members, and shall include a representative of the Office of Financial Affairs. The President shall appoint the chairman of the committee. The committee shall meet as necessary, and shall act in an advisory capacity to the Vice President for Research and Sponsored Programs.

2. The Intellectual Property committee shall recommend to the Vice President for Research and Sponsored Programs the rights and equities in intellectual property created by faculty, staff or students. The University's procedures provide for an appeal procedure in the event of a disagreement as to the ownership and use of such materials.

3. The University has elected to develop and manage its licensing program through an affiliated nonprofit corporation, the Georgia State University Research Foundation, Inc.

E. Trademarks

All trademarks arising out of research by University and applications for registration, use of and licensing of such trademarks shall be governed by the policies of the Board of Regents of the University System of Georgia.

Trademarks arising out of research done by the University pursuant to an agreement with a cooperative organization shall be the property of such cooperative organization and such organization may file all appropriate applications and other documents necessary to protect such trademarks and may exercise all other rights consistent with ownership of the trademarks.

(Source: Vice President for Research and Sponsored Programs, August 8, 1996)