What do we mean by “Authorship”?
“Authorship” means that the work, whether a literary work, software, or any other, is the product of original, creative authorship. “Original” does not mean “novel” as with patents; it means that it is solely a product of the author and was not copied from another’s work. Originality is all that is required. Copyright protection requires some degree of creative authorship.

Background Technology

What is Background Technology?
Background Technology (or Underlying Technology) is pre-existing technology which is essential to practice your invention. It can also include technology which it is desirable to have in order to best practice your invention.

Why is Background Technology important?
Background technology is the tip of the iceberg which can sink us. Giving a third party rights to Background Technology, whether inadvertently or not, or using that technology without the right to do so, can lead to litigation. It might not be ours to give or we may have already given exclusive rights to other parties.

Why is Industry so concerned about Background Technology?
There is always the risk that a “surprise” patent will be found later to which a licensee will require rights in order to use intellectual property which we have licensed to them. The licensee wants to minimize the risk of future “surprise” IP, and wants as close to a 100% guarantee as possible that there will be no “surprising” IP out there. We can’t give them that guarantee, which is why we always say “to the best of our knowledge” or “subject to the rights of third parties”.

What should I do to minimize the chance of inadvertently using Background Technology?
Practice “hygiene”. Do a patent search yourself, carefully review any prior art found during that search and review any other patents that may be brought to your attention by OTL or our attorneys as a result of further patent searches. Also, do a literature search and keep up to date on all new publications that may relate to the field of your invention.

Bayh-Doyle Act

What is the Bayh-Dole Act?
Georgia Tech, in common with other research institutions, is subject to the Bayh-Dole Act which sets out the disposition of inventions made with Federal assistance. The Act provides that the institution may elect to retain title to inventions conceived or first reduced to practice in the performance of work under a Federal funding agreement. OTL must disclose each invention to the government sponsor in a timely manner, and comply with other regulatory actions. In addition, we must grant the U.S. government a royalty free license for governmental purposes, give preference to U.S manufacturers, give preference to small businesses, and share income with inventors. We must also periodically report our patenting and commercialization activity to the government. We must adhere to these provisions of the Act regardless of how little Federal funding was utilized in the conception or development of the invention.

Claim

What is a claim?
A claim in a patent application represents one or more of the essential conceptual elements which make up the invention. Taken together, the claims define the scope of the invention by describing the specific features that distinguish the invention from the prior art. They also provide the basis for legal enforcement of the patent.

How are claims written?
Claims are first written as broadly as possible and then, more narrowly. It is usually easier to obtain a patent with narrow claims but, if too narrow, others can invent or engineer around the patented invention.

Co-Inventor

"Invention"

Confidentiality Agreement

“Non-Disclosure Agreement”

Conflict of Interest

What is conflict of interest?
“Conflict” can be defined as “any outside activity or financial interest which interferes with the full and faithful performance of the employee’s responsibilities or obligations to the institution”. The term “conflict of interest” refers to situations in which financial or other personal considerations may directly and significantly affect, or have the appearance of directly and significantly affecting, a faculty member’s or staff member’s judgment in exercising any Institute duty or responsibility or in the conducting or reporting of research. The bias that such conflicts may conceivably impart can adversely affect many Institute activities, including decisions about the supervision or evaluation of students, collection, analysis and interpretation of data, sharing of results, choice of protocol, use of statistical methods, and restrictions on publication.

What are considered conflicts of interest?
You would be considered to have a conflict of interest when you, or any member of your family, has a significant financial interest in an activity that involves your responsibility as an Institute employee. In addition, it would be considered a conflict of interest if, without Institute approval, you conducted research in the field of your Institute responsibilities externally and in competition with the Institute when that research is within the scope of your Institute employment.

What should I do to minimize any potential conflict of interest?
Unless any potential conflicts are being managed in accordance with the Institute’s Conflict of Interest Policy, your outside activities and financial interests should be arranged so that they do not affect the Institute’s interests, do not compromise objectivity in carrying out your Institute responsibilities, or do not otherwise compromise the performance of your Institute responsibilities. It should be remembered that nearly every licensing arrangement will have the potential for conflict of interest, but these potential conflicts can normally be managed without detriment to the interests of both the faculty or staff member and the Institute. You can contact the director of OTL, or the associate managing your disclosure, who would be happy to refer you to the appropriate person to discuss any potential conflict of interest situations with you.

Copyright

What is a copyright?
A copyright is a property right which protects you against the copying of “original works of authorship fixed in any tangible medium of expression.” These can include literary works, computer programs, musical, pictorial and graphic works, audiovisual works and architectural works. Copyright protection is available for both published and unpublished works. A copyright does not protect an idea, but only your specific expression of that idea. In the case of software, copyright protects the structure, sequence and organization of a software program. In the Copyright Act, a computer program is defined as a “set of statements or instructions to be used directly or indirectly in order to bring about a certain result.”

How do you obtain copyright protection?
A copyright exists in a work as soon as it is created and fixed in a tangible medium. A notice of copyright should be placed on all published and unpublished copies of work; although this is not legally required under the Berne Convention. However, using the copyright notice lets any potential infringer know that the work is protected by copyright and the identity of the owner. It also prevents an infringer in copyright litigation from using the defense of “innocent infringement”. The use of the copyright notice does not require permission from, or registration with, the Copyright Office.

Who owns the copyright?
In those cases where the work is a “work made for hire”, generated within the scope of your employment, the Institute owns the copyright. In other cases, the author owns the copyright. You should be careful to ensure that, when using a contractor to generate a particular work, the written agreement with the contractor provides that ownership of any copyrightable deliverable resides with GTRC.

How long is a copyright effective?
A copyright is protected for the life of the author plus 70 years. For a joint work by two or more authors who did not work for hire, the copyright term lasts for 70 years from the death of the last surviving author. The term of copyright for works made for hire is 95 years from publication or 120 years from creation, whichever is shorter.

Should copyright be registered?
The licensing associate managing your disclosure will discuss the appropriateness of copyright registration with you. Registration with the Copyright Office is not a requirement for protection, although in a few appropriate cases it may offer some advantages. These include establishing a public record of the copyright claim, and it is a prerequisite for bringing a suit for copyright infringement.

Disclosure (also see “Public Disclosure”)

What does “disclosure” mean?
When using the term “disclosure”, we mean the act of formally advising GTRC of the invention, copyright or software. This is done by submitting an Invention (or Copyright or Software) Disclosure Form, which is a written document describing the technology. The disclosure should be in sufficient detail to permit an evaluation of the scientific and technical merit of the invention, whether and how the invention can be protected and its apparent commercial value.

How do I obtain an Invention Disclosure Form?
Download from the Office of Technology Licensing web site, or ask OTL to send you one in the internal mail. The Disclosure includes a description of the invention, the names of the inventors, the date of conception, who sponsored the work, advantages of and applications for the invention, any public disclosures or publications and details of any identified relevant prior art.

Must I always submit a Disclosure Form?
The Institute’s policy requires that all potentially patentable inventions or copyrightable material, other than scholarly works, conceived or reduced to practice in whole or in part by members of the faculty, staff, or students of the Institute in the course of their Institute responsibilities, or with more than incidental use of Institute resources, be disclosed on a timely basis to OTL. Title to such intellectual property is assigned to GTRC, regardless of the source of funding. A Disclosure must always be made promptly of any invention or software program conceived or developed during the performance of your assigned duties. GTRC has a responsibility to advise any sponsor, whether government or non-government, of any invention conceived during the course of any sponsored research project. In other cases, disclosure is necessary to protect the interests not only of the Institute, but also the inventor(s).

Then should I submit the disclosure?
As soon as the invention has been recognized or identified. Recognition or identification of the invention is the most important step in the technology transfer process. It can often be accomplished by asking two simple questions: “Is this discovery new?” and “Is this discovery useful?” It is always better to ask these questions earlier than later. The best time to ask them is each time an experiment or line of enquiry has been completed. Other times that they should be asked are during the preparation of papers, presentations and proposals (but before any public disclosure of those papers, presentations or proposals). Please remember to allow OTL adequate time to review the disclosure and process any patent application which may be appropriate.

How do I benefit from disclosing an invention to Georgia Tech?
Submitting a disclosure satisfies one of the requirements of your employment. Also, without disclosure there can be no patent application. Patents are essential to the successful commercialization of many inventions, particularly those that require large investments to complete development to the commercial stage. There is little likelihood that such inventions will ever become available to the public without patent protection, which provides the investor market exclusivity long enough to recoup the costs of bringing the product to market. So, as well as meeting a condition of your employment, you may have the satisfaction of seeing your invention developed and commercialized; you may receive research support from a licensee or potential licensee for the further development of the technology; you may get your name on a patent without cost to you; the licensee may be interested in retaining you as a consultant; and if the invention is successfully commercialized you will share in the income received by GTRC. Your exposure to the licensing process also increases your exposure to the particular industry’s expertise and needs, thus benefiting you, your students, and the Institute.

What is the invention evaluation process? What happens after I disclose to Georgia Tech?
When received by OTL, Disclosures are logged in, given an ID number, and assigned to a specific technology licensing associate for management. A letter is sent to you and any co-inventors acknowledging receipt of the Disclosure and advising you of the ID number and the associate who will be managing the case. The associate will contact you and discuss the invention, review any prior art which has been identified by you, and make a preliminary evaluation of, amongst other things, manufacturing feasibility, apparent patentability (novelty, usefulness, non-obviousness), potential applications, possible markets, and any potential licensees who may have already been identified. It could be that the invention is an appropriate one for a start-up company, and if that is the case the associate will discuss that possibility with you (see “Start-Ups”). The associate, subsequent to their discussion with you and after undertaking a more detailed evaluation of the technology, will prepare a marketing and licensing strategy if the technology is suitable for commercialization. This strategy will then be reviewed with you. The proposed licensing strategy will cover proposed license terms including exclusivity, territory, duration, fees and royalties, as well as diligence provisions (see "License" for more information on license terms and provisions). At that time a decision will be made by OTL as to whether to claim title to the invention if the invention arose from government sponsored research and, also, whether to seek patent protection for the invention. If the invention arose from industry sponsored research, it is likely that the research contract gave certain IP rights to the sponsor, in which case our discussions with you will be limited to the license terms only. Concurrently, with any decision on patent action, the associate will begin marketing the invention. If interest is shown by potential licensees, the associate will begin discussions with those parties. (See "Marketing"). Although the marketing and negotiating will be undertaken by the associate, your cooperation is essential to respond to any requests from potential licensees for detailed technical information. This information is normally provided under a Non-Disclosure Agreement (see “Non-Disclosure Agreement”).

How detailed should the description of the invention be?
Your disclosure to GTRC should be as detailed as possible. An abstract can be included in the disclosure form and a more detailed description attached to the form. All information provided to OTL is confidential. Without adequate information, OTL cannot perform a complete evaluation of the likely commercial potential of the invention or obtain an accurate opinion on its apparent patentability. Furthermore, any patent application would be futile as the attorney would not possess adequate information to draft a specification and a set of claims that would provide sufficient protection for the invention.

If I have been working on something in an outside collaboration should I disclose the invention to Georgia Tech?
Yes. Please disclose technology developed as a result of outside collaboration to OTL even if your collaborator offers to handle the invention. The employer of each inventor may have ownership in the invention. GTRC will coordinate with other joint owners of inventions and will negotiate how the invention will be managed and any potential royalties shared.

Why is the contract/grant information important to Georgia Tech?
Under federal law, the university is required to report to the government inventions created under government sponsored research. If GTRC decides not to keep title to the invention (that is, decides not to keep it), then the government has the rights to it. In such a case, if the government does not wish to pursue the invention, it may be assigned back to the inventors if they should so wish. Nongovernmental sponsors may also have intellectual property clauses and obligations attached to their sponsorship with which the university must comply.

Why are the dates of conception and disclosure important?
The U.S. patent system is a “first-to-invent” system. That is, the party that can prove they were the first to conceive an invention and demonstrate a reasonable level of diligence in reducing the invention to practice will be awarded the patent rights. This is why keeping a dated and witnessed laboratory notebook, as well as other records of your research is so important (see “Laboratory Notebook”). The dates of disclosure are important because an inventor has one year from the date of public disclosure in the U.S. in which to file a patent application. This includes oral disclosure at a public meeting, any written disclosure that, wholly or in-part, allows one skilled in the art to make or use the invention, or offer of sale of the invention (this excludes offers of license of the invention or technology). Once that year has passed the invention cannot be patented. Also, foreign patent rights are lost once an invention has been publicly disclosed; there is no one year period of grace.

Divulgation (see also “Public Disclosure”).

What is divulgation?
Divulgation, following which the rights to foreign patents are forfeited, is any non-confidential disclosure of the critical aspects or features of an invention by means of a written or oral description, by use, or in any other way. Displaying the invention where the critical features of the invention are readily discernable, or distributing samples where they could be discoverable by analysis, is divulgation.

Equity

"Income”

“Start-Ups”

Fees

“Income”

GTRC

What is GTRC?
GTRC (Georgia Tech Research Corporation), a 501 (c)3, not-for-profit corporation, was chartered in the State of Georgia in April, 1937, to serve as the contracting entity for Georgia Tech. It provides research administration, contracting and intellectual property management services to the Institute’s faculty, staff and students. In providing these services it seeks to be efficient, effective and flexible. Title to all intellectual property developed during the course of Georgia Tech’s research activities resides with GTRC. OTL is a division of GTRC, and supports Georgia Tech’s technology transfer activities with an innovative and flexible licensing program.

Why does GTRC get involved in patenting and licensing?
As a public institution, Georgia Tech has an obligation/responsibility to make its research results available for the benefit of the general public. Entering into commercial arrangements for the further development of technology is often the only way by which the Institute is able to ensure that the technology is made available. The Institute’s technology is usually at an early stage and will require a substantial investment in its further development before a product is ready for market. No company would, under normal circumstances, commit to the support of that further development unless the intellectual property is protected and without an agreement in place to ensure that it will receive commercial benefit from its investment should the further development be successful. GTRC also has obligations to the U.S. government under the Bayh-Dole act relating to the protection and commercialization of inventions conceived and developed with federal government support.

What is GTARC? GTARC is a subsidiary of GTRC and serves as the contracting entity for a single unit of Georgia Tech, the Georgia Tech Research Institute (GTRI). GTARC contracts under the provisions of OMB Circular A-122 and FAR 31.2.

Income

What do we mean by “Income”?
When we use the term “income”, we mean income derived by GTRC from the commercialization of intellectual property. This income is distributed in accordance with the Institute’s Intellectual Property Policy (www.gatech.edu/handbook/section6/intellectual.html). It includes up-front option and license fees, royalties, benchmark payments, and the realization of equity held by GTRC as part consideration for the grant of a license.

How is the income received by GTRC from technology transfer distributed?
Net income, that is gross income less patenting and any other direct costs, is shared between the Institute, the inventor(s) and GTRC. The current distribution of income is shown in the Institute’s Intellectual Property Policy (www.gatech.edu/handbook/section6/intellectual.html). The current distribution of net income is approximately one-third to the inventor(s), 17% to 33% to the inventor(s) “unit”, e.g. college, GTRI, etc., and the balance to GTRC. The share of the income retained by GTRC is firstly used to meet the costs of OTL’s operations, including patent costs on those inventions which are not successfully commercialized, and any balance is used to further the Institute’s research activities.

Is there any cap on the share of income received by the inventor(s)?
No, there is no limit. They receive the full amount authorized by the Institute’s Intellectual Property Policy. In the event of an inventor’s decease while income from their invention is still being generated, their beneficial interest accrues to their estate.

Is the income I receive taxable?
Yes, GTRC does not deduct any withholding tax from your payments, but will issue you a Form 1099 at the end of the calendar year showing the total of any payments made to you during that year. You should check with your tax preparer on how any income you may receive is treated for tax purposes.

Industry Contracting Office

What is the Industry Contracting Office (ICO)? The Industry Contracting Office (ICO) is a division of Georgia Tech’s Office of Sponsored Programs. ICO’s mission is “To promote efficient and effective administration of industry-sponsored research projects”.

Key features of ICO include:

A “One Stop Shop” for industry, commerce and the professions;

Dedicated “Cradle-to-Grave” Contracting Officers;

Fast Track Project Initiation;

Ability to Quickly Resolve Intellectual Property and Other Contractual Issues During the Negotiation Process; and

Ongoing Project Review to Ensure Project Deadlines and Budgets are met. ICO and OTL routinely interact on IP issues in research contracts.

Intellectual Property

What is Intellectual Property (IP)?
“Intellectual property” is property created by the human mind and given legal protection. It has been divided by law into patents, trademarks, copyrights and trade secrets. IP is considered personal property and its ownership can be transferred to other entities by contract. Employment contracts, such as that which you signed with Georgia Tech, usually include assignment clauses assigning to the employer (or GTRC in our case) all intellectual property rights developed by an employee within the scope of the employment relationship.

What is a patent?
A patent is a grant authorized by the Constitution and issued by the U.S. Patent & Trademark Office (USPTO), giving the patent owner the right to exclude others from making, using or selling an invention within the United States for a limited time period. It could be viewed as an agreement with the government wherein the government gives the inventor the exclusive right to the invention for a limited time in exchange for public disclosure of the invention. This disclosure stimulates further research, development and, hopefully, commercialization. A patent does not give the patent owner the right to practice the invention, only the right to exclude others from practicing it. It could be that you would need to obtain rights to some other party’s patent in order to successfully practice the invention.

What kinds of patents are there?
There are three kinds of patents. “Utility” patents are granted to the inventor(s) of any new and useful process, machine, article of manufacture, composition of matter, or any new and useful improvement thereof. “Design” patents are granted on any new, original and ornamental design for an article of manufacture. “Plant” patents are granted on any distinct and new variety of asexually reproduced plant.

What is a Copyright?
A copyright is a property right which protects you against the copying of “original works of authorship fixed in any tangible medium of expression”. These can include literary works, computer programs, musical, pictorial and graphic works, audiovisual works and architectural works. Copyright protection is available for both published and unpublished works. A copyright does not protect an idea, but only your specific expression of that idea. In the case of software, copyright protects the structure, sequence and organization of a software program. In the Copyright Act, a computer program is defined as a “set of statements or instructions to be used directly or indirectly in order to bring about a certain result”.

What is the difference between a copyright and a patent?
Patents cover ideas behind an invention and give the owner of the patent the right to prohibit others from using those ideas. Copyrights protect original works of authorship and give the owner the exclusive right to reproduce the work or license it to someone else.

What is a Trademark?
A trademark is any word, name, symbol or device used to identify the source or origin of goods or services and to distinguish those goods and services from others.

What is a Trade Secret?
A trade secret is business information which has been maintained confidential and which has value in the industry in that the information is not generally known and would be difficult to obtain by competitors. It includes technical or non-technical data, formulae, patterns, programs, devices, methods, techniques, drawings, processes, financial data, product plans, and customer or supplier information.

Internal Revenue Service Procedure 97-14,
Guidelines for Research Agreements

What is IRS Procedure 97-14?
Internal Revenue Service Procedure 97-14 is relevant in those cases where a research sponsor is seeking to acquire intellectual property rights to any invention which may emanate from the sponsored research prior to the development of the invention. Generally it provides that the sponsor must pay a competitive price for rights to any invention. Further information on this procedure can be obtained from the Industry Contracting Office. (Also see www.cogr.org for additional information.)

Invention

What is an invention?
An invention is a new device, method or process developed from study or experimentation. Recognition or identification of the invention is the most important step in the technology transfer process. It can often be accomplished by asking three simple questions: “Is this discovery new?”, “Is this discovery useful?” and “Is this invention unobvious to one of ordinary skill in the art?” It is always better to ask these questions earlier than later. The best time to ask them is each time an experiment or line of enquiry has been completed. Other times that they should be asked are during the preparation of papers, presentations and proposals (but before public disclosure of those papers, presentations or proposals).

What should be done if I think I have made an invention?
You should submit an invention disclosure for all inventions. Completed disclosures should be sent to the Office of Technology Licensing. Also, you should ensure that the conception and development of your invention has been recorded in your laboratory notebook.

How do I disclose an invention to OTL?
By completing and submitting an Invention Disclosure Form (which can be downloaded from the OTL website, www.gtrc.gatech.edu/gtrc/gtonly.disclosureforms.htm, or can be obtained from OTL).

How do I know when my invention is complete enough to file a patent application on it?
Two things signify the completion of an invention: conception and reduction to practice. Reduction to practice is successfully using the invention in its intended way. This should be witnessed by an uninvolved party (i.e. not your grad student or lab tech) and recorded. A written description of an invention should be made as soon as possible after its conception, witnessed and dated, since dates of conception and reduction to practice may be necessary to establish priority of invention. Technically an invention can still be completely conceptual as long as its best mode of operation is described in the patent application, although in practice it is difficult to describe the best mode unless you have reduced it to practice. An actual reduction to practice can be extremely useful to establish priority (e.g. building a prototype), as well as assist in attracting industry interest.

Inventorship

What is meant by inventorship?
Inventorship has a strict legal meaning under the laws and regulations of the U.S. patent system. Only those who have made independent, conceptual contributions to an invention are legal inventors. An inventor is one who, alone or with others, first produces or contrives, by use of ingenuity or imagination, a new and useful process, machine, composition of matter, manufacture or any new and useful improvement thereof that was previously unknown to mankind. If an invention involves more than one inventor, it is a joint invention; multiple inventors are called joint or co-inventors. Inventorship and authorship are not the same, co-authors may not necessarily be co-inventors.

How is it determined who the inventor is?
Legal determination of inventorship is made in relation to the patent claims. The test is whether a person has made an original, conceptual contribution to at least one of the claims of the patent. Only those who meet this test qualify as inventors. U.S. patent regulations require that a patent application be signed by the true inventor(s) only. To be a sole inventor, a person must be responsible for the conception of the invention as described in all the patent claims. Joint or co-inventorship requires communication between the inventors, but it is not necessary for the inventive contributions to be of equal importance. The status of co-inventor cannot be granted merely as a reward for hard work or assistance. This means that students, research assistants, technicians and others, even though they may have gathered data or constructed a prototype, are not inventors unless they have made an inventive contribution.

Laboratory Notebook What is a laboratory notebook?
A laboratory notebook is a written record of your research. The maintenance of a witnessed laboratory bound notebook is important. Conceptions, descriptions of how to achieve particular results, laboratory data and drawings should all be recorded daily on consecutively numbered pages. The entries should be in indelible ink. No erasures should be made (or possible, per the indelible ink); instead, draw a line through the text or data to be deleted and enter the material in corrected form. Initial the portion of the text that has been crossed out. Draw a line through any blank spaces on the page. All entries should be signed and dated by both the researcher and a witness at the time they are made. The witness should be someone who has read and can understand the material, but had nothing to do with producing it.

Why is a laboratory notebook important?
The U.S. grants patents to the “first to invent”, not the “first to file” as is common in foreign countries. Disputes sometimes arise over who was the first to make an invention, and the issue is usually decided by records kept by the parties. In the past disputes raged over who first invented the telephone, the laser, the electric light and the automobile and in all of these cases the availability of records or the lack of records played a deciding role.

What constitutes a good Laboratory Notebook?

Your laboratory notebook should be:

permanently bound with consecutively numbered pages;

the entries should be legible and indelible;

you should sign or initial, and date, the entries;

the entries should be witnessed by someone who understands the technology but is not a co-inventor and

no erasures should be made but any text or data to be deleted should be ruled through and initialed, then the corrected material entered.

License

What is a license?
A license is an agreement granting a company permission to use an invention for commercial purposes, subject to certain terms and conditions that include fair compensation to the Institute based on the estimated value of the invention.

What role does the inventor play in the licensing process? Does the inventor participate in the negotiating process?
The active collaboration of the inventor(s) is essential in the marketing and licensing process. They can help the associate determine the apparent value of the invention; they can proof marketing documents for accuracy; they can provide information on companies which they believe may be interested in the invention (this enables the associate to quickly identify all other companies working in the same field); they work with the patent attorney in the preparation and prosecution of the invention; they respond to companies technical questions on the invention and demonstrate its uses and advantages. However, although the inventor(s) are consulted and advised during the negotiating process, they are not usually directly involved in the negotiations.

Is there a standard fee and terms for a license?
No. License fees and royalty rates, and other terms and conditions, are determined on a case by case basis because every technology, and the circumstances of the proposed commercialization arrangement, are unique.

Are all license agreements similar?
No, different inventions require different licensing strategies. For example, an invention which requires significant investment of resources by the licensee for further development is normally licensed on an exclusive basis. This gives an incentive to the licensee to commit the risk capital investment required to bring the product to market. If it is a basic tool or device likely to be widely used, it would probably be licensed on a non-exclusive basis. Inventions can also be licensed by application, field of use or territory.

May I license my own invention back from Georgia Tech?
Yes, if you (your company) can demonstrate that such a license would provide the best chance of commercialization for that technology and if potential conflicts of interest are manageable (see “Conflict of Interest” and the section on “Start-Ups”).

What issues are covered in a license agreement?

The issues covered in a license agreement include:

What is being licensed;

Exclusivity or non-exclusivity of the license;

Coverage of all uses of the invention or restrictions to specific applications and/or uses;

Coverage of all regions or restriction to specific territory (e.g. USA);

Consideration (up-front payments, royalties, benchmark payments, payment of patent costs, equity);

Inclusion of the right to sub-license to another party;

Ownership of improvements (this could affect any future work you may do in the field, and your rights to further developments);

Performance benchmarks/criteria (investment requirements, time to market, sales, etc.);

Governing law;

Indemnification;

Term of the license;

Limitation of liability and

Termination criteria.

What is GTRC’s major aim when proposing a license agreement?
The goal in any negotiations is to enter into a license agreement which is fair and reasonable to both parties, and will ensure a long-term mutually rewarding relationship between the Institute and the Licensee. Within the legal constraints imposed upon us, flexibility is the key word. Most licenses have circumstances that require special consideration. A few examples include the investment to be made by the Licensee to bring the invention to market, competitive technologies, whether the technology is a stand-alone invention or needs another technology to enable it to be utilized, and the patent position. If the Licensee is a start-up company, they normally cannot afford significant up-front payments, but can offer equity or payments to be made when certain benchmarks are attained.

What happens after a license agreement has been signed?
After execution of the License Agreement, regular contact is maintained with the Licensee and their performance, as well as adherence to the provisions of the license agreement, is monitored by the licensing associate. In many cases, the licensee will fund further research at the Institute to help in further development of the technology and may also retain the inventor as a consultant. Income received from the Licensee, including any benefit derived from equity, is distributed in accordance with the Institute’s Intellectual Property policy. The share of income accruing to schools, departments or centers can only be used for research purposes. Often during the term of a license circumstances change and it may be necessary to amend the agreement to take into account new situations. For example, a new competitive technology may enter the market, drastically reducing the market share of the licensed technology; there may have been unforeseen problems in completing development of the product, thereby decreasing its cost effectiveness or some of the patent claims covering the invention may be disallowed, significantly decreasing the strength of the patent.

Marketing

How does Georgia Tech find licensees?
Often the best sources for potential licensees are the inventors (according to national surveys 60% of licensees are introduced by the inventors) since they are likely to know about people and companies doing work related to the field they are inventing in. If they can identify one or more companies which may be interested, then OTL has resources available which will enable them to identify other U.S companies working in the same field, and the key contacts in those companies. Once appropriate companies are identified, targeted mailing letters are sent to the appropriate contacts in those companies. If appropriate, the companies may be contacted by phone. Our available technologies are also publicized on our webpage and in selected technology licensing publications and databases. In some cases press releases are widely distributed. Of course, if the invention arose during the performance of industry sponsored research, the research contract may have granted the sponsor certain IP rights, in which case we may already have a probable licensee. Companies who express interest in the invention normally request an opportunity to evaluate the technology. This is done under a Non-Disclosure Agreement or possibly, if the company is particularly interested, under an Option Agreement (see “Option” under frequently asked questions). If strong interest has been shown, a draft license agreement will be submitted to the potential licensee as a basis for discussion.

Why is University Licensing so Difficult?
The products of university research are usually not developed in response to market need, and are also usually embryonic – they haven’t been demonstrated; the buyer can’t “touch” the merchandise’; often the inventor(s) can’t define or detail its usefulness; and often we are not even sure it will work. Licensing from a university also involves risk to the licensee – investment in development; license fees; reorientation of internal resources and priorities; and, possibly, changes in manufacturing processes and products.

Mask Work

What is a Mask Work?
Mask Work means a series of related images, however fixed or encoded, having or representing the predetermined, three dimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a semiconductor chip product; and 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.

Materials Transfer Agreement

What is a Materials Transfer Agreement?
A “Materials Transfer Agreement” (MTA) is an agreement that provides that any materials being made available by one party to another, are being made available for scientific work only and not for commercial use. No right of ownership or commercial use is transferred to the recipient of the materials.

Who processes Materials Transfer Agreements at Georgia Tech?
All Materials Transfer Agreements at Georgia Tech, both “In” and “Out”, are handled by the Office of Sponsored Programs. By “In” we mean those agreements under which an outside party is providing materials to Georgia Tech, and by “Out” we mean those agreements covering materials being provided by a Georgia Tech employee to an outside party. See OSP site for MTA processing forms.
Non-Disclosure Agreement
Why are Non-Disclosure or Confidentiality Agreements necessary?
A Non-Disclosure or Confidentiality Agreement is necessary before any proprietary information is disclosed from one party to another. Without this agreement, the party to whom the information is disclosed is free to use and transmit the information to others. This also protects the technology from public disclosure that could hurt the chances of getting a patent. Any information being passed on to another party must be identified as proprietary and any information conveyed orally should be confirmed in writing, once again marked “Proprietary”. We recommend contacting OTL before disclosing any proprietary information to any other party.

How do I arrange for a Non-Disclosure or Confidentiality Agreement to be executed?
If it is in relation to discussions with a potential licensee, OTL will arrange for an agreement to be submitted to the interested party for execution. If it is in relation to sponsored research, the agreement will be processed by the Industry Contracting Office. In all other cases, the agreements are processed by the Office of Legal Affairs (OLA).

Can I sign a Non-Disclosure Agreement on behalf of GTRC?
No, to be valid the document must be signed by a signatory authorized by the GTRC Board.

Option
What is an option?
An option is an agreement which grants a company, for consideration, an exclusive right for a limited period of time to evaluate the technology and/or negotiate a license on agreed upon terms and conditions.

Office of Technology Licensing (OTL)

What is the Office of Technology Licensing?
The Office of Technology Licensing (OTL) is a division of GTRC which is responsible for the evaluation, protection and commercialization of intellectual property for all Georgia Tech organizations. Faculty members, students and staff are the primary source of intellectual property. Intellectual property can be protected through patents, copyrights, trademarks and trade secrets. Commercialization occurs primarily through licenses of patents and/or know-how to existing companies, and in some cases, through the creation of a start-up company.

What does OTL do?
OTL evaluates, protects, manages and commercializes the Institute’s Intellectual Property; protects the interests of faculty inventors/developers; ensures compliance with government laws and develops and fosters long-term Industry-Institute relationships. OTL receives invention, software and copyright disclosures from Georgia Tech faculty, staff and students; evaluates those disclosures for their novelty, viability and commercial potential and, when possible; licenses them to industry or (if appropriate) a start-up company. If successfully licensed, income received by OTL provides funding to the inventor’s department, school or center to support further research, as well as a personal share for the inventor. A disclosure is first reviewed for apparent novelty, then with the inventor to explore potential applications. The technology is, then, evaluated, a decision made as to whether to seek patent protection and a marketing and licensing strategy is developed.

Does Georgia Tech license only patents or patentable inventions?
No, OTL also handles copyrights, trademarks, “know-how” (research of value but not covered by a patent) and other tangible research property.

What is Know-How?
“Know-How” is knowledge of how to do something, or a faculty or skill for a particular thing. The “Know-How” may not be commonly known, it may be a unique skill of an individual and may not be readily identifiable by others. Know-How may not be protected but may be kept as a Trade Secret.

Where is the Office of Technology Licensing?
The Office of Technology Licensing is located at 505 Tenth Street, Atlanta, GA 30332-0415. It can be contacted by phone (404-894-6287), fax (404-894-9727) or email.

Ownership

If I invent something at Georgia Tech does it belong to the Institute? What about inventions I thought of and invented before I came to the Institute or outside of the Institute?
The Institute’s policy requires that all potentially patentable inventions or copyrightable material, other than scholarly works, conceived or reduced to practice in whole or in part by members of the faculty, staff, or students of the Institute in the course of their Institute responsibilities, or with more than incidental use of Institute resources, be disclosed on a timely basis to OTL. Title to such intellectual property is assigned to GTRC, regardless of the source of funding. What is pertinent regarding ownership is not the location you were at when the idea was conceptualized, but its relationship to your research or work at the Institute. If the idea grows out of your work or research or is developed with more than incidental use of Institute resources, or if it is an outgrowth of sponsored research (even if it did not use substantial Institute resources) then it belongs to the Institute. If you have been working on something in an outside collaboration it should be disclosed to OTL even if your collaborator offers to handle the invention. The employer of each inventor may have ownership in the invention. GTRC will coordinate with other joint owners of inventions and will negotiate how the invention will be managed and any potential royalties shared.

If I write a software program as my thesis can I license and distribute it myself, or does the Institute own it? The Institute owns patentable and/or copyrightable software developed using Institute resources, software developed as work for hire, software that was commissioned by the Institute and software developed under a sponsored project.

Patent

What is a patent?
A patent is a grant from the Federal government that allows the patent owner to prevent others from practicing an invention for a limited period of time, in the case of U.S utility patents, 20 years from the date of the patent application. In return for the granting of the patent, the law stipulates that the invention be made public. Thus, by reading the patent, others are able to practice the invention if given a license by the patent owner. The owner has the right to prevent others from practicing the invention covered by a patent, but they may be inhibited from practicing it themselves if it infringes a dominating patent owned by another party. In that event they would need themselves to obtain a license from the other owner. To be patentable, an invention must meet three criteria – it must be novel, useful and not obvious, that is, non-obvious to someone of ordinary skill in the art.

What rights do an issued patent give you?
A patent gives the owner the right to exclude others from making, using or selling an invention, covered by the patent, throughout the country which issued the patent for a limited period of time. In the USA this is 20 years from the date of the patent application. A patent does not automatically give the owner the right to practice the invention, since such action may infringe the claims of an earlier and still current patent.

What kinds of patents are there?
There are three kinds of patents. “Utility” patents are granted to the inventor(s) of any new and useful process, machine, article of manufacture, composition of matter, or any new and useful improvement thereof. “Design” patents are granted on any new, original and ornamental design for an article of manufacture. “Plant” patents are granted on any distinct and new variety of asexually reproduced plant.

What is included in a patent?
A patent has two parts: the specification, which is a narrative presentation of the invention, including the prior art which preceded it, and must include the best mode of practicing the invention known by the inventor and the claims, which describe the essential elements of the invention. The specification starts by briefly describing the field of the invention. Then there is a background section which describes the work done in the past (prior art) and its shortcomings. All known prior art must be disclosed. If needed to aid in understanding the inventions, drawings are included. This is followed by a disclosure of the invention, setting forth in general terms what the inventor considers to be the invention and its advantages. Then the summary of the invention details the theory on which the invention rests and full details of the way the invention can be implemented. Each implementation is called an embodiment and the best one is the preferred embodiment of the invention. Next the industrial applicability section describes the applications in which the invention will be used. The claims circumscribe the legal bounds of the invention. They describe the essential elements of the invention, firstly as broadly as possible, and then more narrowly. Although it is generally easier to obtain a patent with narrow claims, if they are too narrow then others can possibly work around the patented invention.

How is a patent obtained?
The filing and prosecution of patent applications with the USPTO is undertaken by outside patent attorney firms. Past experience in previous cases, technical competence, and possible inventor preferences, are considered by the licensing associate when making his or her selection of the appropriate patent attorney. The inventor(s) cooperation is essential in patent filing and prosecution. The patent attorney will be knowledgeable in the general field of the invention, but they are unlikely to have the specific expertise of the inventor(s). The inventor(s) interaction with the attorney is essential to obtain meaningful patent protection. (For more information on “Patents” see the “Patents” section below, or go to “Intellectual Property” in the “Frequently Asked Questions” section).

Does GTRC file patent applications on all disclosures it receives?
OTL does not file patent applications on all invention disclosures it receives due to the high cost of filing and prosecuting ($10,000 - $15,000). If we already have a commitment from a licensee or potential licensee to meet patent costs, we will proceed immediately with an application. If significant commercial viability for the technology has been proven, we may also proceed. In many cases, if the invention appears to have apparent commercial viability but this has not yet been confirmed, we will file a provisional patent application. This establishes a priority date and gives us a 12 month window in which to confirm the potential of the technology, during which time we can, if appropriate, seek market interest in the invention. In that case any potential licensee will be required to sign a confidentiality agreement before detailed information on the technology is disclosed to them. Any utility application must be filed within twelve months of the date of the provisional filing to preserve the priority date.

How long does it take to get a patent?
Typically, there is a 24-36 month prosecution before allowance, with costs ranging from $10,000 - $15,000.

What is a provisional patent application?
A provisional application is a faster, less expensive application used to establish a priority date with the Patent Office It is a way of postponing the cost and effort of preparing and filing a full or utility application, while the invention is being evaluated to determine whether to proceed with filing a full application. After filing a provisional patent, the applicant has one year to file a complete application and any foreign applications. It should be remembered that the provisional application will only establish a valid priority date if the claims of the later full application are supported by the earlier filed provisional application. If a full application is not filed within 12 months from the date of filing of the provisional application, the provisional application will lapse. In that case, the provisional application is not published or made available to the public by the Patent Office.

How long is a patent valid?
For new patents the term is 20 years from the date of filing.

Apart from the obvious potential commercial benefit, and my personal benefit, what other benefits are derived by patenting an invention?
Society as a whole benefits whenever important patented products become available (which may not have happened if the supplier did not have monopoly rights to the technology). When a patent issues, publication is mandatory, so the community benefits by learning about inventions through this publication process. From the researcher’s perspective, an often unrecognized feature of the patent system is that it is structured to encourage people to invent around the patent, to provide alternative solutions to the problem addressed by the invention. This attribute of the system often serves as a stimulant to make further inventions.

Patent Attorney

What should I know about working with a patent attorney?
Cooperation between the patent attorney and inventor(s) is essential if a strong, effective patent is to be obtained. To prepare for the interview with the attorney you should collect and briefly summarize all relevant printed materials, publications and prior patents; prepare rough sketches, graphs and tables describing the invention; list all alternative ways you can think of as to how your invention can be implemented; draft a description of the preferred embodiment of the invention; prepare a description of the advantages and uses of the invention; and prepare a glossary of terms pertinent to the invention. Don’t assume the patent attorney knows the subject matter in detail. During the interview develop the theory behind your invention from a very basic level; don’t jump any steps; explain all possible embodiments and applications of the invention; have your files and any materials readily available; and if possible, show the attorney a physical embodiment of the invention.

Why do I need to be prepared for and responsive to the patent attorney?
As mentioned in the answer to the preceding question, cooperation between the inventor(s) and the patent attorney is essential if a strong, effective patent is to be obtained. What you should also remember is that any lack of cooperation or failure to be responsive drives up the cost and reduces any subsequent “net income”, which affects your share of that income. The services of a good patent attorney are worth the cost, but those services do not come cheaply. Attorney’s fees range from $250 to $400 per hour, so it is in your best interest, as well as that of Georgia Tech, to ensure that any time spent with the attorney, either in person or on the phone, is as productive as possible. You should also respond as quickly as possible to any communications from the attorney, whether during the preparation of the patent application or during its prosecution, such as responses to issues raised by the patent examiner.

How is a patent attorney selected? Do I have any input?
Past experience, technical competence, and possible inventor preferences are considered by the licensing associate when making his or her selection of the appropriate patent attorney. OTL uses several different outside law firms so as to have access to a broad range of expertise and experience. The cooperation of the inventor(s) is essential in patent filing and prosecution. The patent attorney will be knowledgeable in the general field of the invention, but they are unlikely to have the specific expertise of the inventor(s). The inventor(s) interaction with the attorney is essential to obtain meaningful patent protection.

Patentability

What is patentability?
When OTL inquires about patentability, we are asking whether or not the invention is capable of being the subject of a valid patent. We check this by an examination of the patents and publications in the U.S. Patent & Trademark Office, as well as other publications, to determine the probable patentability of the invention.

What are the requirements for patentability?
In order to be patentable, an invention must first be novel (i.e. new and original), must have a utility (a clear use), and it must be non-obvious. Even though it is new, it must not be obvious to one of ordinary skill in the field to which the invention applies.

Why are the dates of conception and disclosure important?
The U.S. patent system is a “first to invent” system. The party that can prove they were the first to invent gets the rights to the patent. Keeping dated notes that others have witnessed, and other records, is potentially very important for patenting. The date of public disclosure is important because in the U.S. an inventor has one year from the date of disclosure in which to file a patent application. Once the invention has been publicly disclosed foreign patent rights are lost.

Patent Search

What is a patent (or patentability) search?
It is a search of existing patents and other publications to determine if the invention is new, novel and non-obvious; and, thus, potentially patentable.

Why should I Do a Patent Search?
You believe that you have something that is new, novel, and non-obvious, and would like to see the invention protected by a patent. But before OTL can obtain a patent, several steps must be taken. Among these is performing a prior art search. As the inventor, you know your brainchild better than anyone else does - and that is why it is important for you to perform a prior art search to save money and headaches for all of us later on down the road. As a researcher, it is an excellent idea to perform prior art searches before and during your research project. This could be thought of as an extension of a literature search. It would be a shame to invest your and OTL’s time and resources into trying to obtain a patent, only to find out someone else has come up with and disclosed a similar invention. If this were the case, then we can not obtain a patent because your invention already exists. As well as helping you to verify that your invention or research is worth further time and resources, the search also helps OTL determine the potential value of your invention.

How Do I Do a Patent Search?
Prior art searches can be done through several websites, but the only official website of the US Patent & Trademark Office (USPTO) is www.uspto.gov. It maintains the most up-to-date (updated every Tuesday) information on current US patents, and is an extremely useful tool to find out just how new, novel, and non-obvious your invention might be. There are several ways you can search the USPTO website. The most direct step is to click the “Patent” button off to the left side of the screen when you first get to the site’s home page. This gives you a plethora of options, but the one concerned with patent searching is found directly under the category “Services” as “SEARCH Patents”. From there you can select a “Quick Search” or an “Advanced Search”. You then have the option of searching several ways for prior art. If you have the information you can find patents by means of patent number, or assignee (to find companies in the related field), title, claims, etc. To improve upon your results, you should search multiple fields including the “Claims” and “Title” for keywords that describe your invention, the “Assignee” for companies in the relevant industry, and the “Description/Specification” for main ideas. You may want to also consider searching the “Patent Applications”, as they are just as important as issued patents, to give a heads up on what may present a problem later. The broader your search, the better is our chance to avoid future problems.

The objective in searching for prior art is to try and find anything that could possibly relate to your invention or research. You should not assume that your invention is unlike anything else. It is a good idea to be very liberal in searching for similar technologies. It is not advisable to conveniently ignore any hits either because closely related prior art could lead to a rejection of our patent application or to later invalidation of the patent if already issued. On the other hand, that related prior art may help you develop new features that are not anticipated by the prior art and improve your invention. Also, keep in mind, as you read journals and periodicals, to look out for any related prior art. Remember, we are obligated to disclose to the USPTO any relevant prior art we have found. The more careful you are the better our chances of obtaining a patent and taking your invention to the next step.

What other sites can I search for prior patents?
There are several other reputable web sites you can visit to search for prior art patents. These include:

Delphion (www.delphion.com);

A Singapore government site, which covers U.S. and some foreign patents, and publications (www.surfip.gov.sg).

Prior Art (also see “Background Technology”)

What is prior art?
Prior art is the total body of knowledge which teaches or anticipates the invention, or otherwise relates directly to the invention. It includes patents, publications, physical embodiments and visual presentations.

Publication

What is publication?
Publication is any disclosure in a form which is readily accessible to or distributed to the public.

Can I publish and still protect my work?
Yes, as long as you have submitted a disclosure to OTL and a provisional or utility patent application has been filed before you publish or divulge your invention. You can publish and protect the commercially valuable parts of your research by planning ahead, preparing and submitting a disclosure of your invention to OTL as early as possible and coordinating publication divulgation with patent filing.

Public Disclosure

What is considered a public disclosure of an invention?
Anything that is readily available to the public, such as a journal paper, a publication on the Web, a conference presentation, or a dissertation indexed at the library, which describes the idea in enough detail that someone else would be able to make and use the invention, is public disclosure. Showing or telling your new ideas may also constitute disclosure, including website postings and laboratory visits, as does selling or offering for sale a physical embodiment of the invention.

Why should I be concerned about public disclosure?
Inventors should be aware that patent rights can be lost by Publication or Divulgation. Many are aware that there is a one year grace period following release of an enabling printed publication in which to file a U.S patent application, but this concession does not apply in foreign countries – any publication or divulgation closes the door on the possibility of obtaining foreign protection. Rights to a U.S patent are forfeited if an enabling printed publication is released more than one year prior to the time a U.S patent application is filed. Enabling means that the publication describes the invention in sufficient detail and specificity to enable a person of ordinary skill in that art at that time to make, construct and practice the invention without an unreasonable amount of experimentation. Divulgation, following which the rights to foreign patents are forfeited, is any non-confidential disclosure of the critical aspects or features of an invention by means of a written or oral description, by use, or in any other way. Displaying the invention where the critical features of the invention are readily discernable, or distributing samples where they could be discoverable by analysis, is divulgation.

What if I want to discuss my invention with others, outside Georgia Tech, before GTRC has filed a patent application?
Contact OTL. The person, or company, should sign a Non-Disclosure Agreement, agreeing to keep your invention in confidence, before you have any discussion. If I publish a paper or make an oral disclosure before GTRC files a patent application, have we lost patent rights? There is a one year period from date of the public disclosure to file a U.S. patent, but foreign rights are lost immediately.

Should I refrain from publishing a paper or making an oral public disclosure of an invention before GTRC has filed for a patent?
Yes! Call the Office of Technology Licensing if in doubt. Although we have the one-year grace period in which to file a U.S patent application, prior disclosure to OTL enables us to do a preliminary evaluation to determine if we should file a provisional application and thus protect our foreign patent rights.

Record Keeping See “Laboratory Notebook”

Right of First Refusal

What is a Right of First Refusal?
A right of first refusal is an agreement wherein a company is given the first right, for a limited period, to seek to negotiate a license for an invention. It does not set pre-determined terms and conditions and does not preclude us from seeking interest from other parties. However, if another party makes an appropriate proposal for license rights, then we must first offer the right of first refusal holder a license on the terms offered to us by the other party.

Royalties See “Income”

Scholarly Works

What are Scholarly Works?
Scholarly works are papers, articles, books, and other publications which are produced through individual effort and initiative and not as part of an assigned duty, and may be subject to copyright. Georgia Tech recognizes and encourages the publication of scholarly works as an integral part of the processes of teaching and research, and GTRC does not claim title to such scholarly works.

Search See “Patent Search”

Software

What is Software?
Software is the collection of programs loaded externally which cause a computer to perform a desired operation or series of operations. It can be categorized in three groups; “Non-Technological Applications” software, “Component’ software, and “Technological” software.

What is “Non-Technological Application” software?
Much of the software developed at Georgia Tech is not the object of a research project, but is written for use in teaching, administration, or other ‘non-technological’ purpose. Educational software is probably the largest percentage of non-technological applications software.

What is “Component” software?
Component software is part of a technological device or system that is developed as part of a research project, but is not the focus of the research itself. An example would be in a new imaging system, or a robotic system, where the software is a component of the overall system. Component software is commonplace, and is not the object of any invention, but a component of a larger system, device, equipment, or method.

What is “Technologic” software?
As the name implies, in this category the software is of a technologic nature, the object of technical innovation. This includes such things as network software, operating systems, electronic spreadsheets, database systems, word processing or email software, computer-aided design systems, artificial intelligence, file compression programs, and the like.

Is Software considered an invention? Sometimes. Copyright laws usually govern software but in some cases the ideas behind the software, that is the process, or series of steps performed to achieve a result, are patentable. A patentable invention may include software code.

Should all Software which could be patented actually be patented?
No, it should not be patented unless it is truly unique and has the potential to generate significant income.

Are “Algorithms” patentable?
Yes, they can constitute the very method that is patented. It is really only mathematical procedures and formulas that are not patentable by themselves, but they can be patented as part of a software system or method.

Start-Ups

Does Georgia Tech encourage faculty or student start-ups?
Georgia Tech actively encourages entrepreneurship and the involvement of its faculty inventors in start-up companies if they so choose. However we must be sensitive to public perception when a faculty member is associated with a start-up company. There is always the likelihood of conflict of interest, but these conflicts can usually be managed. To review Georgia Tech’s procedures on conflict of interest issues go to www.gatech.edu/technology/researchinfo/conflict.html.

Are there any risks in Start-Ups?
Start-up companies can be risky, they often fail. Included among the reasons for failure are: poor planning, lack of management ability, insufficient capital, misreading the market and emotional, rather than logical, decisions. So why license a start-up?

They frequently enhance the probability of successfully bringing embryonic technology to market.

They are flexible, can make quick decisions, and this is their top priority.

They give a commonality of interest with the faculty.

Equity offers the possibility of superior financial returns to compensate for the risk.

They contribute to the local economy.

They may become a significant sponsor of research at Georgia Tech.

What factors does GTRC consider when considering licensing a start-up?
When licensing to a start-up OTL must ensure:

That the technology being licensed is appropriate for a start-up (for example, a process for the production of ethanol would not be appropriate due to the capital resources required).

That a sound management team, with business experience, is in place.

That they have a realistic business plan with appropriate cash flow projections.

That the license agreement includes milestones for bringing the technology to market.

That any potential conflicts of interest can be managed.

Do you write or help to write business plans?
No, but we work closely with VentureLab who will help you with this.

What is VentureLab?
VentureLab is part of Georgia Tech’s Office of Economic Development and Technology Ventures. It helps provide a clear pathway from laboratory to market, with guidance along the way from entrepreneurs who have already made the trip. VentureLab helps faculty who want to be involved in a start-up to evaluate the potential of their technology, provides connections to attract outside funding and offers pre-seed awards to help move innovations to the commercial stage (see www.venturelab.gatech.edu).

Does GTRC take any management role in a start-up?
No, or any Board position.

Students

Are students subject to Georgia Tech’s Intellectual Property Policy?
Yes, the Student Handbook states that any student enrolled at Georgia Tech is subject to the Institute’s Intellectual Property Policy. If any intellectual property is conceived or developed by a student during the performance of their course work, title to the intellectual property resides with GTRC. Student inventors enjoy the same rights and benefits as do faculty and staff inventors.

Technology

What is Technology?
The World Intellectual Property Organization (WIPO) defines Technology as “systematic knowledge for the manufacture of a product, the application of a process or the rendering of a service, whether that knowledge be reflected in an invention, an industrial design, a utility model, or a new plant variety, or in technical information or skills, or in the services and assistance provided by experts for the design, installation, operation or maintenance of an industrial plant or for the management of an industrial or commercial enterprise or its activities”.

Technology Transfer

What is Technology Transfer?
Technology may be transmitted through the intangible process in which any body of knowledge is diffused, or it may be the subject of a specific communication, enshrined in a particular transaction. Technology transfer, in this latter sense, conventionally takes the form of an integrated sequence of commercial transactions. This sequence includes the grant or assignment of industrial property rights; the communication of technical know-how in a documentary form; and the communication of technical; or other know-how in a documentary form; and the communication of technical or other know-how in the supply of services. It is the grant of industrial property rights to which we are referring when we use the term, in a generic sense, of “technology licensing.” In practice, we are referring to any means adopted for the commercialization of technology, whether it is licensing, joint venture, distribution or any other appropriate arrangement.

Trademarks

What is a Trademark?
A trademark is any word, name, symbol or device used to identify the source or origin of goods or services and to distinguish those goods and services from others.Trade Secret

Trade Secret

What is a Trade Secret?
A trade secret is business information which has been maintained confidential and which has value in the industry in that the information is not generally known and would be difficult to obtain by competitors. It includes technical or non-technical data, formulae, patterns, programs, devices, methods, techniques, drawings, processes, financial data, product plans, and customer or supplier information.

Underlying Technology see "Background Technology"

FAQs for Inventors

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