Intellectual Properties

Policy Number: 6.3
Effective Date: May 2, 2019
Revision History: August 4, 2016; May 28, 2013
Policy Contact: Chief of Staff

Purpose and Policy Statement

The purpose of this policy is to set forth the rights and responsibilities of Georgia Gwinnet College (GGC or the College) and of all employees, students, and volunteers associated with the College, regarding the creation and development of intellectual property. This policy is designed to be interpreted in connection with BOR 6.3, which covers the same subject matter. A true copy of the GGC Intellectual Property Policy shall be filed with the Office of Legal Affairs in the University System Office, as required by BOR 6.3.6.

Scope

This policy applies to all employees, students, and volunteers associated with GGC.

Definitions

Intellectual properties: Patentable materials, copyrighted materials, trademarks, software, and trade secrets, whether or not formal protection is sought.

Patentable materials: Items other than software that reasonably appear to qualify for protection under the patent laws of the United States or other protective statutes, including Novel Plant Varieties and Patentable Plants, whether or not patentable thereunder.

Copyrighted materials: 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 Lectures, musical or dramatic compositions, and unpublished scripts;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. Instructional materials;
7. Mask works; and,
8. Other materials or works other than software that qualify for protection under the copyright laws of the United States (See 17 U.S.C. § 102 et seq.) or other protective statutes whether or not registered thereunder.

Net revenue: Gross receipts received by the College from license activity minus contract amounts due sponsors, if any, and the out-of-pocket costs incurred by the College in protecting and licensing the intellectual property.

Software: 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.

Computer program: A set of instructions, statements, or related data that, in actual or modified form, is capable of causing a computer or computer systems or parts therein to perform specified functions.

Trademarks: All trademarks, service marks, trade names, seals, symbols, designs, slogans, or logotypes developed by or associated with the USG or any of its institutions. (See 15 U.S.C. § 1127.)

Trade secrets: Information including, but not limited to, technical or nontechnical data, a formula, a pattern, a compilation, a program, a device, a method, a technique, a drawing, a process, financial data, financial plans, product plans, or a list of actual or potential customers or suppliers that:

1. Derives economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and
2. Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy (See O.C.G.A. § 10- 1-761).

Patentable plant: An asexually reproduced, distinct, and new variety of plant (See 35 U.S.C. § 161).

Mask work: A series of related images, however fixed or encoded:

1. Having or representing the predetermined, three dimensional pattern of metallic, insulating, or semi- conductor material present or removed from the layers of a semiconductor chip product; and,

2. In which series the relation of the images to one another is that each image has the pattern of the surface of one form of the semiconductor chip product (See 17 U.S.C. § 901).

Novel plant variety: A novel variety of sexually reproduced plant (See 7 U.S.C. § 2321 et seq).

Creator and originator: Used interchangeably to mean the creator, author, inventor, or similar person and that person’s executor, heirs, successors, and assigns.

Employees, students, and volunteers: Any individual employed by the College (such as full-time or part-time faculty and full-time or part-time staff), enrolled as a student at the College, or voluntarily serving at the College.

Determination of Rights and Equities in Intellectual Properties

Sponsor-Supported Efforts

Sponsored project agreements with the College or one of its foundations often contain specific provisions with respect to ownership of intellectual property developed during the course of such work, in which case the terms of the sponsored project agreement shall establish ownership. The sponsor may:

1. Specify that the materials be placed in the public domain;
2. Claim reproduction, license-free use, or other rights; or,
3. Assign all rights to the institution. In those cases where royalty income is realized by the institution, 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 institution regulations.

When the sponsored project agreement is silent on the matter, all rights in intellectual property shall vest in the College. Income, if any, from such intellectual property shall be shared with the originator, subject to the sponsor’s requirements, in accordance with the Revenue Sharing section of this policy.   

College-Assigned Efforts

Ownership of intellectual property developed by an employee, a student, or a volunteer as a result of College-assigned efforts shall reside with the College. Copyrightable works created by an employee in the course of his/her employment are considered to be works made for hire under copyright law, with ownership vested in the employer. However, any income from such intellectual property shall be shared with the originator, in accordance with the Revenue Sharing section of this policy.

The above notwithstanding, a faculty member’s or student’s general obligation to produce scholarly and creative works does not constitute a work for hire or a specific College assignment. This may include academic journal articles published by faculty members or assigned coursework produced by students.

College-Assisted Individual Effort

Ownership of intellectual property developed by an employee, a student, or a volunteer where the College provides support of their efforts or use of College resources in more than a purely incidental way shall be shared by the inventor or creator and the College.

The use of the following College resources generally shall constitute more than purely incidental use and shall result in shared ownership of the intellectual property under this Section: resources provided by College-funded and/or College Foundation-funded grants, and stipends; College employees (other than faculty) within the employment period; cost-added supplies and services; and College facilities other than offices, labs, studios, or library. Income, if any, from such intellectual property shall be shared in accordance with the Revenue Sharing section of this policy.

The use of the following College resources generally shall not result in shared ownership: resources available to the public without charge; College-owned/leased office, lab, or studio space or general use equipment; general use computer equipment; library resources, including electronic resources; and Internet access.

Individual Effort

Ownership of intellectual property developed by an employee, a student, or a volunteer  shall reside with the originator of such intellectual property provided that (1) the intellectual property is not prepared in accordance with the terms of a sponsored project contract or grant; (2) the intellectual property is not developed as a specific College assignment; and (3) there is no use, except in a purely incidental way, of College resources in the creation of such  intellectual property.  The originator of the  intellectual property shall have the opportunity to demonstrate that this classification applies.

Other Efforts

Ownership rights to intellectual property developed under any circumstances other than those listed above shall be determined on an individual basis and approved by the president of the GGC or his/her designated representative. Such efforts may include, but are not limited to, consulting for outside organizations; collaborating with non-employees, students, or volunteers; or serving on non-College boards, committees, task forces. Any agreement should include a statement that the employee, student, or volunteer has intellectual property obligations to the College and this policy should be attached to the agreement. In the event that there is any conflict between the employee, student, or volunteer’s obligations to this policy and their obligations to the entity or collaborative arrangement for which they provide these efforts, the obligations to this policy shall control. The nature and extent of inventor or creator participation in royalty income will be determined by the president or his/her designee.

Intellectual Property Committee

The president shall appoint a College intellectual property committee, consisting of no fewer than four or more than nine members, one of whom shall be designated by the president to serve as chair. The committee shall include representatives of the Business and Finance division, the faculty, the staff, and the student body. The committee shall meet as necessary and shall act in an advisory capacity to the president or his/her designee.

The duties of the IP Committee include:

1. Advise the president, any vice president, or any designee regarding any intellectual  property matter or any matter relating to the College’s intellectual property policy.
2. Review disclosure of intellectual property documentation submitted by employees, students, or volunteers.
3. Perform any necessary consideration of circumstances, interpret provisions of policy, and make recommendations in cases in which questions arise as to equities, rights, division of royalties, or any other intellectual property-related matter.
4. Evaluate intellectual property developed through Sponsor-Supported Efforts and College-Assigned Efforts to determine whether to administer such intellectual property through efforts it determines to be appropriate to protect and license or otherwise commercialize such intellectual property.
5. Recommend, where appropriate, a lower percentage of the net revenue outlined in the Revenue Sharing section of this policy. Any revenue sharing recommendations from the Intellectual Property Committee require written review and approval by the appropriate vice president.

Disclosure of Intellectual Property  

Employees, students, and volunteers shall promptly report to the committee in writing, through the channels established by the committee, all  intellectual property invented or created by them, which is reasonably likely to have commercial value. This includes promptly providing the Intellectual Property Committee with a disclosure describing their creative and scholarly work and new material, devices, processes, or other inventions which may have commercial potential.

In the case of  intellectual property created by multiple parties, the principal creator or originator shall be responsible for informing coworkers, co-investigators, and direct reports of their rights and obligations under the College’s intellectual property policy, contracts, grants, and the like before the initiation of research or other sponsored projects.

Obligations of Creators and Originators of Jointly Created Intellectual Property 

Confidentiality          

Certain contractual obligations and governmental regulations require that information be maintained in confidence. Some works, such as certain computer software, may best be protected and licensed as trade secrets. Additionally, inventions must be maintained in confidence for limited periods to avoid the loss of patent rights. Accordingly, the timing of publications is important, and employees, students, and volunteers shall use their best efforts to keep the following items confidential (to the extent allowed by law): all information or material designated confidential in a contract, grant, or the like; all information or material designated or required to be maintained as confidential under any applicable governmental statutes or regulations; and all information relating to  intellectual property developed by employees, students, and volunteers, which may be protected under this policy until application has been made for protection.

Collaboration

Collaboration between employees, student, volunteers and persons not employed or associated with the College, including researchers at other universities or companies can result in the development of  intellectual property jointly owned by the College and other persons or their employers. Protection and commercialization of such joint  intellectual property can be difficult without extensive cooperation and agreement among the owners. Accordingly, employees, students, and volunteers involved in collaborative activities that may result in the development of  intellectual property must advise their immediate supervisors and the Office of Research and Sponsored Programs of such activities.

Administration of Sponsor-Supported Efforts and College-Assigned Efforts

The Intellectual Property Committee has the responsibility to evaluate  intellectual property developed through Sponsor-Supported Efforts and College-Assigned Efforts and to determine whether to administer such  intellectual property by protecting, licensing, or otherwise commercializing such  intellectual property.

Administration of College-Assisted Individual Effort

Any  intellectual property which is the result of College-Assisted Individual Effort under this policy shall be administered by the originator, unless the originator and the intellectual Property Committee agree to have it administered by the College. Such  intellectual property which is administered by the College shall be treated as College-Assigned Effort. In this situation, the originator shall assign to the College his/her share of the ownership rights in such  intellectual property, and the determination of revenue sharing shall be in accordance with the Revenue Sharing section of this policy as it pertains to the College-Assigned Effort classification.

Administration of Individual Effort

Intellectual property designated as Individual Effort shall be assigned to the originator under a simple memorandum which may provide for periodic reports describing the originator’s administrative activities, including any generation of payments or royalties. The originator shall have responsibility for administration of the  intellectual property. Individual Effort intellectual property may be assigned to the College to be treated and administered as College-Assigned Effort if both the president and the originator agree to do so. In this situation, the originator shall assign to the College his/her share of the ownership rights in such  intellectual property, and the determination of revenue sharing shall be in accordance with the Revenue Sharing section of this policy as it pertains to the College-Assigned Effort classification.

Declined Intellectual Property

Whenever the College chooses not to administer  intellectual property or chooses to cease administering  intellectual property, such  intellectual property, subject to any obligations to a sponsor, may be released to the originator to dispose of as the originator sees fit.

Revenue Sharing

All Recommended Revenue Sharing Distribution Agreements must be approved by the appropriate vice president. Recommendations shall be made in writing by the Intellectual Property Committee.

A. Net Revenue from License Activity

The proposed division of net revenue is presented below. Where the College owns some portion of the  intellectual property in question, revenue generated from the College’s use of the  intellectual property shall not constitute receipts by the College from license activity.

Recommended Revenue Distribution

The first $15,000 of net revenue earned from the licensing activity of the  intellectual property shall belong to the originator. All net revenue earned from licensing activity of the  intellectual property above $15,000 shall be allocated as follows:

* Funds designated for the originator’s discipline will be provided to the originator’s school with a recommendation that this portion of the funds be devoted to fostering further scholarship and research in the originator’s discipline.

Notes on Originator’s Portion:

1. The originator’s share of net revenue shall be divided (equally) among joint originators of jointly developed  intellectual property, unless a written statement signed by all joint originators which provides for a different distribution is filed with the College prior to the first distribution of shared net revenue.
2. In the event the  intellectual property is licensed to the originator, or an external entity in which the originator has a significant financial interest, the originator shall waive the right under this policy to receive the originator’s share of royalties identified above (except when the development of the  intellectual property meets the criteria established for the Individual Effort category, in which case this clause does not apply). In the event the originator does not receive the originator’s share, that share shall be distributed to the other parties in the proportions detailed above.
3. In the event the terms of the license of the  intellectual property provide the College with equity, or an option to acquire equity, in the entity which licenses the  intellectual property, the share of such equity due to originators as identified above will be distributed to the originators when such equity is transferable or convertible to cash.

For Sponsor Supported Efforts, College Assigned Efforts, and College Assisted Efforts, the College Intellectual Property Committee may recommend an allocation of revenue that differs from the recommended distribution.

B. Net Revenue from College Use of College-Owned Intellectual Property

Where the College owns some portion of the  intellectual property in question, net revenue generated from use of the  intellectual property by the College shall be divided in accordance with the following table.

Recommended Revenue Distribution

For Sponsor-Supported Efforts, College-Assigned Efforts, and College-Assisted Efforts, the College Intellectual Property Committee may recommend an allocation of revenue that differs from the recommended distribution.

Interpretation, Decision, and Appeal

Cases where the originator and the president agree to the classification and proposed mechanism of commercialization, the intellectual property will be processed by the College in accordance with this policy. All cases in which questions arise as to equities, rights, division of royalties, or any other  intellectual property-related matter shall be referred to the Intellectual Property Committee for consideration, interpretation of policy, and decision. Appeal of an Intellectual  Property Committee decision shall be made to the appropriate vice president within twenty calendar days of the committee’s decision. Appeal of a vice president’s decision shall be to the president or his/her designee within twenty calendar days of the vice president’s decision. A final institutional decision will be issued by the president or his/her designee. If further appeal is necessary after issuance of a final institutional decision, the party may appeal to the Board of Regents. Appeals to the Board of Regents shall be made in accordance with BOR 6.26.

Heirs and Assigns

The provisions of this policy shall fix the interests of and be binding upon the heirs and assigns of (1) all employees, students, and volunteers; and (2) all others who agree to be bound by it.

Trademarks   

All trademarks arising out of research by GGC faculty, staff, and students of the University System of Georgia constitute property of the Board of Regents of the University System of Georgia, and applications for registration, use of, and licensing of such trademarks shall be governed by the policies of the Board. Trademarks arising out of research done by GGC 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.