Medical College of Georgia Intellectual Property Policy

Section 1. Introduction

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

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

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

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

Accordingly, the Medical College of Georgia does hereby establish the following policy with respect to the development, protection, and transfer of rights to Intellectual Property resulting from the work of its faculty, staff or students.

Intellectual Policy Form

Section 2. Definitions

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

"Patentable Materials" shall be deemed to refer to (1) a novel plant variety of a sexually reproduced plant, as described in 7 U.S.C. 2321 et seq., (2) a patentable plant, as described in 35 U.S.C. 161, and (3) items other than software which reasonably appear to qualify for protection under the patent laws of the United States or other protective statutes, whether or not patentable thereunder.

"Copyrighted Materials" shall include the following: (1) books, journal articles, texts, glossaries, bibliographies, study guides, laboratory manuals, syllabi, tests and proposals; (2) lectures, musical or dramatic compositions, unpublished scripts; (3) films, filmstrips, charts, transparencies, and other visual aids; (4) video and audio tapes or cassettes; (5) live video and audio broadcasts; (6) programmed instructional materials; (7) mask works1; and (8) other materials or works other than software which 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.

"Software" shall include one or more computer programs existing in any form, or any associated operational procedures, manuals or other documentation, whether or not protectable or protected by patent or copyright. The term "computer program" shall mean a set of instructions, statements or related data that in actual or modified form, is capable of causing a computer or computer system to perform specified functions.

"Trademarks" shall include all trademarks, service marks, trade names, seals, symbols, designs, slogans, or logotypes developed by or associated with the University System or any of its institutions. (See 15 U.S.C. 1127.)

"Trade Secrets" means 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 which: (i) derives economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. (See O.C.G.A. 10-1-761.)

Section 3. Determination of Rights and Equities in Intellectual Property

Rights and equities in intellectual property created by Medical College of Georgia faculty, staff, and students shall be determined by the Medical College of Georgia based upon the property's inclusion in one of the following categories:

1. Sponsor-Supported Efforts
   The grant or contract between the sponsor and the Medical College of Georgia, under which Intellectual Property is produced, may contain specific provisions with respect to disposition of rights to these materials. The sponsor (1) may specify that the materials be placed in the public domain, (2) may claim reproduction, license-free use, or other rights, or (3) may assign all rights to the institution. In those cases where royalty income is realized by the Medical College of Georgia, 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.
2. Medical College of Georgia-Assigned Efforts
   Ownership of Intellectual Property developed as a result of assigned institutional effort shall reside with the Medical College of Georgia, however, sharing of royalty income with the inventor or creator is authorized as an incentive to encourage further development of Intellectual Property. The nature and extent of inventor or creator participation in royalty income, however, shall be subject to Medical College of Georgia regulations.
3. Medical College of Georgia-Assisted Individual Effort
   Ownership of Intellectual Property developed by faculty, staff or students of the Medical College of Georgia where the Medical College of Georgia provides support of their efforts or use of Medical College of Georgia resources in more than a purely incidental way (unless such resources are available without charge to the public) shall be shared by the inventor or creator and the Medical College of Georgia. The nature and extent of inventor or creator participation in royalty income, however, shall be subject to Medical College of Georgia regulations.
4. Individual Effort
   Ownership rights to Intellectual Property developed by faculty, staff or students of the Medical College of Georgia shall reside with the inventor or creator of such Intellectual Property provided that: (1) there is no use except in a purely incidental way, or Medical College of Georgia resources in the creation of such Intellectual Property (unless such resources are available without charge to the public); (2) the Intellectual Property is not prepared in accordance with the terms of a Medical College of Georgia contract or grant; (3) the Intellectual Property is not developed by faculty, staff or students as a specific Medical College of Georgia assignment. The general obligation to produce scholarly and creative works does not constitute a specific assignment for this purpose. The nature and extent of the use of institution resources shall be subject to Medical College of Georgia regulations and shall be determined by the Medical College of Georgia.
5. Other Efforts
   Ownership rights to Intellectual Property developed under any circumstances other than those listed in Section 3. A.-D. of this policy shall be determined on an individual basis and approved by the President of the Medical College of Georgia or his or her designated representative. The nature and extent of inventor or creator participation in royalty income, however, shall be subject to Medical College of Georgia regulations.

Section 4. Intellectual Property Committee

Intellectual Property activities shall be under the general cognizance of a Medical College of Georgia Intellectual Property Committee. This committee shall be appointed by the President upon recommendation by the Vice President for Research. The Committee shall consist of seven voting members as follows: four representatives shall be selected from the faculty at large; one representative shall be selected from the Office of Fiscal Affairs and Planning; one representative shall be selected from the Medical College of Georgia Research Institute, Inc.; and one representative shall be selected for the Legal Office. The President shall designate a chairperson from those appointed. The Committee appointments will be for two years. Members of the Committee may be appointed to serve successive terms. In the event any seat on the Committee is vacated prior to expiration of the normal term, the President shall appoint a successor to fill the unexpired term of the seat vacated. The presence of four voting members shall constitute a quorum for the transaction of official business of the Committee.

The Committee shall meet as necessary and shall act in an advisory capacity to the President, or his or her designee.

The Intellectual Property Committee shall have the responsibility of (1) recommending to the President the rights and equities in Intellectual Property, (2) recommending changes in policy and procedure pertaining to Intellectual Property, (3) providing communication with Medical College of Georgia personnel as to the proper procedures for identifying and protecting Intellectual Property, and (4) recommending the disposition of all Intellectual Property. The disposition of Intellectual Property shall fall into one of three categories: (1) approval for appropriate Intellectual Property protection by the Medical College of Georgia, (2) rejection and releasing of rights in the Intellectual Property to the inventor/author or (3) determination that the Medical College of Georgia has no rights in the Intellectual Property.

Section 5. Intellectual Property Policy Applicability to Faculty, Staff and Students

The Intellectual Property policy of the Medical College of Georgia shall apply to all Medical College of Georgia personnel. For the purpose of application of this policy, the term "Medical College of Georgia personnel" is defined to include all part-time and full-time members of the faculty, staff and housestaff, and all other agents, employees, students, and fellows of the Medical College of Georgia.

Medical College of Georgia personnel shall promptly report to the Intellectual Property Committee in writing, through the Office of Grants and Contracts, all Intellectual Property invented or created by them which is reasonably likely to have commercial value and shall provide such information and upon such forms as the Office may request. Within five working days of receipt, the Office of Grants and Contracts will forward this information to the Intellectual Property Committee along with a request that the Committee recommend to the President the rights and equities in the Intellectual Property.

Medical College of Georgia personnel may request the use of administrative structure associated with the Intellectual Property policy of the Medical College of Georgia to pursue intellectual property in which they would normally have full rights, as described herein at Section 3.D., "Individual Effort". In exchange and consideration for this service, the individual will be required to assign to the Medical College of Georgia or its designee, his or her rights in the Intellectual Property. The inventor/author shall share in royalties as agreed upon by the inventor/author and the Medical College of Georgia of its designee.

Section 6. Administration of the Consideration of Rights in Intellectual Policy

1. The Vice President of Research shall administer the principles and policies set forth herein, utilizing the Medical College of Georgia Intellectual Property Committee as provided herein.
2. If the administration of the Medical College decides not to pursue development of the Intellectual Property, or takes no specific action which indicates an intent to do so, within one hundred twenty (120) days after the receipt of the Intellectual Property report by the Office of Grants and Contracts, all rights may revert to the inventor/author upon written request.
3. If the Medical College of Georgia pursues development of the Intellectual Property, it shall take action within two hundred seventy (270) days after the issuance of the final, written recommendation of the Intellectual Property Committee. If the Medical College of Georgia fails to act within this period, all rights may revert to the inventor/author upon written request.
4. If the Medical College of Georgia pursues development of the Intellectual Property but subsequently abandons such pursuit, all rights revert to the inventor/author upon written request.
5. The division of any net revenues generated as a result of the licensure, sale or other development of any Intellectual Property developed in this Policy shall be in accordance with the formulae set forth in "Attachment A", attached hereto and incorporated herein. For purposes of this policy, "net revenues" is defined as gross revenues less any expenditures borne by the Medical College of Georgia, the Board of Regents of the University System of Georgia, the Medical College of Georgia Research Institute (MCGRI), or their designees in obtaining protection for the development of Intellectual Property, and any and all expenditures incurred by the Medical College of Georgia, the Board of Regents of the University System of Georgia, The Medical College of Georgia Research Institute, or their designees, in contemplation of or the maintenance of any litigation or controversy between any parties involving rights under such Intellectual Property.
6. If the Medical College of Georgia assigns the Intellectual Property to an outside party or affiliated nonprofit corporation for development and if that party abandons pursuit of the Intellectual Property or takes no specific action which indicates an intent to pursue development of the Intellectual Property within the scope of its agreement with the Medical College of Georgia, within ninety (90) days or within the time specified by the contract of assignment, all rights to the Intellectual Property shall revert to the Medical College of Georgia for a period of ninety (90) days. If the Medical College of Georgia fails to take action to exploit the Intellectual Property within said ninety (90) days, all rights in the Intellectual Property shall revert to the inventor/author upon written request.

Section 7. Appeals

Medical College of Georgia personnel shall have the right to appeal the decision of the Vice President for Research. Appeals shall be made in writing to the President within thirty (30) days of the final decision of the Vice President for Research and shall state the decision complained of an the redress desired.

Medical College of Georgia personnel may, in accordance with Article IX of the Bylaws of the Board of Regents, apply to the Board for a review of the decision of the President.

Section 8. Conflicts with Regents' Policies

In the event of a conflict between this policy and the official Patent Policy of the Board of Regents, the latter shall prevail.