The purpose of the University of Georgia Research Foundation, Inc. (UGARF) is to serve the University of Georgia (UGA) and enhance its excellence as a research institution. UGARF contributes to the research function of UGA by securing gifts, contributions, and grants from individuals, industries, private organizations, and government agencies and by obtaining contracts with such individuals or entities for the performance of sponsored research, development, or other programs in the various UGA colleges, schools, departments, and other units.

UGARF was incorporated under the laws of the State of Georgia as a nonprofit corporation on November 17, 1978. UGARF is certified as a tax-exempt corporation under Section 501(c)(3) of the Internal Revenue Service Code. In a Memorandum of Understanding (MOU) dated February 26, 1979, the Board of Regents of the University System of Georgia authorized UGARF to serve as the official grantee for all contracts, grants, and gifts for the conduct of sponsored research at UGA. The MOU also assigned all intellectual property developed through the research programs or by UGA personnel to UGARF. UGARF is the administrative organization for employee-related discoveries, innovations, inventions, patents, and copyrights. The ongoing objective is to provide services to UGA and, through those services, to enhance the programs and goals as a research institution.

Intellectual Property and Technology Transfer
       Intellectual Property Policy of the University of Georgia
       Assessing Commercial Opportunities
       Income Distribution
       Intellectual Property
               Copyrights
               Mask Works
               Patents
               Plant Variety Protection Certificates
               Tangible Research Property
               Trade Secret and Know-How
               Trade and Service Marks
       Licensing Intellectual Property
       Ownership of Intellectual Property
       Protection of Intellectual Property
       Reporting Intellectual Property

Research Awards Program
       Anderson (Robert C.) Memorial Award
       Creative Research Awards
       Creative Research Medals
       Inventor's Award

Research Grants and Support
       Faculty Research Grants
       Foreign Travel Support
       Plant Variety Improvement
       Senior Faculty Research Grants in the Humanities and Fine Arts

INTELLECTUAL PROPERTY AND TECHNOLOGY TRANSFER

The University of Georgia Research Foundation, Inc. is the assignee of intellectual property developed at UGA either through UGA research programs or by UGA personnel. UGARF has responsibility for protecting and marketing intellectual property and proprietary information to industry, and for negotiating and prosecuting license agreements and industry-sponsored research agreements.

I. PREAMBLE

The University of Georgia, hereinafter referred to as the "University," is dedicated to teaching, research, and the extension of knowledge to the public. Faculty, staff, and students at the University, hereinafter referred to as "University Personnel," 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 production of creative and scholarly works and the development of new and useful materials, devices, processes, and other inventions, some of which may have potential for commercialization. Such activities contribute to the professional development of the individuals involved, enhance the reputation of the University, provide additional educational opportunities for participating students, and promote the general welfare of the public at large.

Such creative and scholarly works and inventions that have commercial potential may be protected under the laws of various countries that establish rights called "Intellectual Property," a term that includes patents, copyrights, trade secrets, trademarks, plant variety protection, and other rights. Such Intellectual Property often comes about because of activities of University Personnel who have been aided wholly or in part through use of facilities of the University. It becomes significant, therefore, to insure the utilization of such Intellectual Property for the public good and to expedite its development and marketing. The rights and privileges, as well as the incentive, of the authors, creators, or inventors, hereinafter referred to as the "Originators," must be preserved so that the use of their abilities and the abilities of others at the University may be further encouraged and stimulated.

In order to establish the respective rights and obligations of the University, its faculty, students, and other employees in Intellectual Property of all kinds now and hereafter existing and of all countries, regions or other political entities, the University has established the following Intellectual Property Policy.

The University shall require as a condition of employment that all University faculty and staff agree in writing to recognize and adhere to this policy. Students and others working on research projects at the University requiring University assistance or utilization of University facilities will be required to agree in writing to recognize and adhere to this policy.

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II. RIGHTS AND EQUITIES IN INTELLECTUAL PROPERTY

II.A. Sponsor-Supported Efforts

Sponsored project agreements 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. When the sponsored project agreement is silent on the matter, all rights in Intellectual Property shall vest in the University.

Income, if any, from such Intellectual Property developed from Sponsor-Supported Efforts shall be shared, subject to sponsor's requirements, in accordance with Section III.K.

II.B. University-Assigned Efforts

Ownership of Intellectual Property developed as a result of assigned University effort shall reside with the University. Copyrightable works created by an employee in the course of his/her employment are considered to be works made for hire under the Copyright Law, with ownership vested in the employer. Notwithstanding the above, however, 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 University assignment.

Work supported by University or University of Georgia Research Foundation, Inc. grants shall be considered assigned efforts rather than the general obligation to produce scholarly and creative works.

Income, if any, from such Intellectual Property developed from University-Assigned Efforts shall be shared as described below in Section III.K.

II.C. University-Assisted Individual Efforts

Ownership of Intellectual Property developed by University Personnel through an effort that makes significant use of University resources shall be shared by the Originator and the University. In general the University shall not construe the provision of office space, access to library resources, or off-line office computers as constituting significant use of University resources. Significant use of University resources shall include, but not be limited to, use of research funding, use of University-paid time within the employment period, use of support staff, use of telecommunication services, and the use of facilities other than office or library resources.

Income, if any, from such Intellectual Property developed from University-Assisted Individual Efforts shall be shared as described below in Section III.H and K.

II.D. Individual Efforts

Ownership of Intellectual Property developed by University Personnel shall reside with the Originator of such Intellectual Property provided that:

(1) there was no significant use of University resources in the creation of such Intellectual Property; and
(2) the Intellectual Property was not developed in accordance with the terms of a sponsored project agreement; and
(3) the Intellectual Property was not developed by faculty, staff, or students as a specific University assignment.

It shall be the responsibility of the Originator of the Intellectual Property to demonstrate that this classification applies.

II.E. Consulting

Consulting for outside organizations may be performed by University faculty pursuant to prior approval by the University and pursuant to this University policy on Intellectual Property. Any consulting agreement should include a statement that the faculty member has obligations to the University as described in this Intellectual Property Policy, and this Intellectual Property Policy should be attached to the consulting agreement. In the event that there is any conflict between the consultant's obligations to this Intellectual Property Policy and their obligations to the entity for whom they consult, the obligations to this Intellectual Property Policy shall control.

II.F. Research notes, data reports, and notebooks

Copyright protection subsists in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Research notes, research data reports, research notebooks, and software created during research are included within the definitions of copyrighted materials and software. Their ownership is determined by Paragraphs II.A. through II.D. with ownership vested in the University if the research is University assigned, if University resources, as defined in paragraph II.C., are used or if so determined by the sponsored project agreement.

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III. ADMINISTRATIVE PROCEDURES

III.A. Responsibility

The administration of the principles and policies set forth in this document is the responsibility of the Vice President for Research, whose office shall do so with the utilization of a University Intellectual Property Committee. The Intellectual Property Committee shall be appointed by the President and consist of no less than three or more than nine members, one of which shall be designated by the President to serve as Chair. Additional ad hoc members may be added by the Chair at any time as considered necessary.

III.B. Intellectual Property Administration Organization

The University shall utilize the University of Georgia Research Foundation, Inc., hereinafter referred to as "UGARF," as its Intellectual Property administration organization. An Intellectual Property Administration Agreement shall be established between the UGARF and the Board of Regents of the University System of Georgia on behalf of the University that shall require the assignment of Intellectual Property developed at the University, in which the University has ownership, to UGARF. UGARF shall administer the Intellectual Property.

III.C. Disclosure of Intellectual Property

University Personnel shall promptly provide UGARF with a disclosure describing their creative and scholarly works and new material, devices, processes, or other inventions which they consider may have commercial potential, be it either II.A. (Sponsor-Supported Efforts), II.B. (University-Assigned Efforts), II.C. (University-Assisted Individual Efforts), or II.D. (Individual Efforts), using forms provided by UGARF. University Personnel shall also cooperate with UGARF and sign all papers deemed necessary to protect and commercialize Intellectual Property covered by this Intellectual Property Policy.

Disclosures are not required for works of authorship, such as articles for publication in scholarly or professional journals, or instructional or research material for internal use where there is no intent to commercially exploit the intellectual property, even though the ownership of the copyright may reside in the University as determined by Sections II.A., II.B., or II.C. In such cases of University ownership, the author is granted a license for the limited purpose of the particular non-commercial publication.

III.D. Obligations of Principal Investigators/Project Directors

Principal Investigator/Project Directors shall be responsible for informing co-workers of their rights and obligations under contracts, grants, and the like before the initiation of research.

III.E. Confidentiality

Certain contractual obligations and governmental regulations require that information be maintained in confidence. Additionally, some works, such as certain computer software, may best be protected and licensed as trade secrets, and inventions must be maintained in confidence for limited periods to avoid the loss of patent rights. Accordingly, the timing of publications is important, and University Personnel shall use their best efforts to keep the following items confidential:

(1) All information or material designated confidential in a contract, grant, or the like;
(2) All information or material designated or required to be maintained as confidential under any applicable governmental statutes or regulations; and
(3) All information relating to Intellectual Property developed by University Personnel which may be protected under this Policy until application has been made for protection.

III.F. Collaboration

Collaboration between University Personnel and persons not employed or associated with the University, including researchers at other universities or companies, can result in the development of Intellectual Property jointly owned by the University 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, it is important for University Personnel involved in or contemplating collaborative activities that may result in the development of Intellectual Property to advise the UGARF of such activities.

III.G. Administration of Sponsor-Supported Efforts (II.A.) and University Assigned Efforts (II.B.)

UGARF has the responsibility to evaluate Intellectual Property developed from Sponsor-Supported Efforts, and from University-Assigned Efforts, and to determine whether to administer such Intellectual Property by undertaking those efforts it determines, in its sole discretion, to be appropriate to protect and license or otherwise commercialize such Intellectual Property.

III.H. Administration of University-Assisted Individual Efforts (II.C.)

Any Intellectual Property that is the result of University-Assisted Individual Efforts may be administered by the Originator or, if the Originator and UGARF agree, by UGARF. Such Intellectual Property that is administered by UGARF shall be treated as University-Assigned Efforts (II.B.) Intellectual Property and shall require the assignment of the Originator's rights in such Intellectual Property to UGARF.

Intellectual Property that is administered by the Originator under this Section III.H shall be assigned to the Originator under a simple agreement that provides for periodic reports describing the Originator's administrative activities, generation of payments or royalties, and for payment to UGARF of a portion of net revenue (as defined in Section III.K.) from the exploitation of the Intellectual Property. Such payment shall normally be 10% of the Originator's net revenue from the exploitation of the Intellectual Property; however, UGARF may recommend a higher or lower percentage if it seems evident that use of University resources warrants a larger or smaller payment provision.

III.I. Administration of Individual Efforts (II.D.)

It shall be the responsibility of University Personnel who are Originators to demonstrate that Intellectual Property made, discovered, or developed while employed at the University as a result of individual effort meets the criteria set forth in II.D. Individual Efforts. In each case so demonstrated and agreed by UGARF, the Intellectual Property will be acknowledged as belonging to the Originator to dispose of as the Originator sees fit. Notwithstanding the above, the disclosure requirement defined in Section III.C. is waived for works of authorship such as scholarly publications and articles and instructional material for internal use which are readily transferred to the public by the Originator without the need for further development or business or legal input. Conditional license of ownership to the author is provided with the disclosure waiver.

Individual Effort Intellectual Property may be assigned to UGARF to be treated and administered as University-Assigned Effort (II.B.) Intellectual Property if both UGARF and the Originator agree to do so.

III.J. Declined Sponsor-Supported Effort (II.A.) and University-Assigned Effort (II.B.) Intellectual Property

Whenever UGARF chooses not to administer Intellectual Property or chooses to cease administering Intellectual Property that is classified or is being administered under Sponsor-Supported Efforts (II.A.) or under University-Assigned Efforts (II.B.), such Intellectual Property, subject to any obligations to sponsor, may be assigned by UGARF to the Originator to dispose of as the Originator sees fit.

III.K. Revenue Sharing with Originators

Net revenue, which is gross receipts received by the UGARF from license activity minus the out-of-pocket costs incurred by UGARF in protecting and licensing the Intellectual Property, generated from Intellectual Property administered by UGARF shall be distributed as follows:

first $10,000 of accumulated net revenue 100% to Originator

over $10,000 25% to Originator
10% to Originator's Research Program
10% to Department/Unit
15% to UGARF Operations
40% to UGARF Research Fund

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 that provides for a different distribution is filed with UGARF prior to the first distribution of shared net revenue.

The 10% for Originator's research applies only while the Originator is employed by, and conducting research at, the University. If this is not the case this share is returned to UGARF Research Fund.

In the event the terms of the license of the Intellectual Property provide UGARF 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 in III.K will be distributed to the Originators when such equity is transferable or convertible to cash.

In the event the Intellectual Property is licensed to the Originator, the Originator shall waive the right under the University Intellectual Property Policy to receive the Originator's share of royalties identified above in Section III.K.

If the Originator owns or controls 25% or more of the entity that licenses the Intellectual Property, the Originator shall waive the right under this University Intellectual Property Policy to receive the Originator's share of royalties identified above in III.K.

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 in III.K.

III.L. Interpretation, Decision, and Appeal

Cases where the Originator and UGARF agree as to the classification and proposed mechanism of commercialization of the Intellectual Property will be processed by UGARF 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 to the Vice President for Research, then to the President, and finally to the Board of Regents. Appeals within the University must be made in writing within sixty (60) days of written notice of a final decision. Appeals to the Board of Regents shall be made in accordance with Article IX of the Bylaws of the Board, which requires that all appeals be filed within twenty (20) days of the final decision of the President of the University.

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IV. PREVAILING POLICY AND HEIRS AND ASSIGNS

IV.A. Prevailing Policy

In the event of conflicts between the Intellectual Property Policy of the University of Georgia and the Intellectual Property Policy of the Board of Regents of the University System of Georgia, the Intellectual Property Policy of the Board of Regents shall prevail.

IV.B. Heirs and Assigns

The provisions of this Policy shall inure to the benefit of and be binding upon the heirs and assigns of (a) all University Personnel and (2) all others who agree to be bound by it.

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V. DEFINITIONS

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

"Patentable Materials" shall be deemed to refer to items other than software which reasonably appear to qualify for protection under the patent laws of the United States (see 35 U.S.C. 101 et seq.) or other protective statues, including Novel Plant Varieties and Patentable Plants, whether or not patentable thereunder.

"Copyrighted Materials" shall include the following: (1) books, journal articles, texts, glossaries, bibliographies, study guides, laboratory manuals, syllabi, tests, and proposals; (2) lectures, musical or dramatic compositions, unpublished scripts; (3) films, filmstrips, charts, transparencies, and other visual aids; (4) video and audio tapes or cassettes; (5) live video and audio broadcasts; (6) programmed instructional materials; (7) mask works; (8) research notes, research data reports, and research notebooks; and (9) 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 17 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.)

"Patentable Plant" means an asexually reproduced distinct and new variety of plant (see 35 U.S.C. 161.)

"Mask Work" means a series of related images, however fixed or encoded: (i) 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 (ii) in which series the relation of the images to one another is that each image has the pattern of the surface of one form of the semiconductor chip product. (see 17 U.S.C. 901.)
"Novel Plant Variety" means a novel variety of sexually reproduced plant. (see 7 U.S.C. 2321 et seq.)
Recommended by the University of Georgia Intellectual Property Committee 1/26/95
Approved by University Council 4/13/95
Approved by the University of Georgia Research Foundation Board of Directors 5/26/95
Approved by the Board of Regents of the University System of Georgia 11/8/95
UGARF@ovpr.uga.edu

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Assessing Commercial Opportunities

Two critical factors determine the attractiveness of an innovative idea to companies capable of developing it into a commercial product: the idea must be protectable, preferably through broad, valid patents, so that the company developing and marketing it can control its use and sale for the life of the patent; and the idea must benefit a segment of society and appeal to a potential market large enough to justify investment in development, manufacture, and marketing by a company, whether it is a major multinational company or a start-up one. The resulting product or process must be profitable.

Net revenue, which is gross receipts received by the UGARF from license activity minus the out-of-pocket costs incurred by UGARF in protecting and licensing the Intellectual Property, generated from Intellectual Property administered by UGARF is distributed as follows:

The Originator's share of net revenue is divided equally among joint Originators of jointly developed Intellectual Property unless a written statement signed by all joint Originators that provides for a different distribution is filed with UGARF prior to the first distribution of shared net revenue.

The 10% for Originator's research applies only while the Originator is employed by, and conducting research at UGA. If this is not the case this share is returned to the UGARF Research Fund.

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Intellectual property includes patentable inventions, patentable plants, copyrightable works, mask works, novel plant varieties, trademarks, service marks and trade secrets. The following is a synopsis of the types of protection available for works of authorship and technology:

• Copyrights. Copyrightable materials are defined in the U.S. Copyright Act as original works of authorship embodied in a tangible, or fixed, medium of expression. Copyrights protect the form of expression of an idea, but not the underlying idea. Books, papers, videotapes, films, music, paintings, and computer software are examples of materials typically subject to copyright protection.

  Copyright protection exists from the time the work is created in fixed form; that is, it is an incident of the process of authorship. While it is not necessary to register a copyright or place a copyright notice on works to be published, UGARF recommends that a notice should be included to protect future commercial interests. The notice should take the following form:

  _20__, the University of Georgia Research Foundation, Inc. (for works being published); or

  Unpublished work _ 20__, the University of Georgia Research Foundation, Inc. (for works not published but distributed outside of the University of Georgia.

  The copyright owner typically maintains an exclusive right to reproduce the work, prepare derivative works based on the original work, distribute copies of the work to the public, and perform and display the work publicly.
  
  
• Mask Works. A mask work is a series of related images representing a predetermined, three-dimensional pattern of metallic, insulating, or semiconducting layers of a semiconductor chip product. Under the Semiconductor Chip Act of 1984, mask work protection extends for 10 years and gives the owner of the qualifying mask work exclusive rights to its exploitation. Mask works are registered with the United States Copyright Office. Failure to apply within two years of the initial commercial exploitation results in the termination of the exclusive rights.
• Patents. A patent is a grant issued by the United States or foreign jurisdiction giving an inventor or, in some cases, the inventor's assignee or licensee, the right to exclude others from making, using, or selling the invention within a certain territory for a certain period of time. Patents generally protect new, useful, and non-obvious compositions, devices, and processes.

  To identify potentially patentable inventions, you should continually review your work in the context of United States patent law, which states the terms upon which patents may be granted:

  A process, such as a method of using specific molecules for the diagnosis of viral diseases;
  A machine, such as a new instrument for the synthesis of oligonucleotides;
  An article of manufacture, such as an assay kit for an infectious disease or class of diseases;
  A composition of matter, such as a new molecule (characterized by amino acid or nucleotide sequence) or a new chemical compound;
  New and useful improvements of the above;
  Any distinct and new variety of plant that is asexually reproduced;
  Any new, original, and ornamental design for an article of manufacture;
  A novel trait expressed in a living organism (e.g. plants, animals, and microorganisms).

  If an innovation fits into one of these categories, United States patent law also requires that it be:
  New (or novel): The invention must be demonstrably different from any existing prior art. This means it cannot be described in prior "public disclosures," which include research publications, or be available to the public as a commercial product;
  Useful: The invention must be useful in ways that represent improvements over existing products or techniques;
  Non-obvious: The invention cannot be obvious to a person of "ordinary skill" in the art. Non-obviousness usually is demonstrated by showing that practicing the invention yields surprising, unexpected results.

  Each of these three criteria is open to interpretation. Establishing novelty or usefulness often relies on arbitrary value judgements. For example, it may not be clear that a new gene-sequencing instrument is "demonstrably different" from other existing models, or that the use of a new hybridoma for narrow research purposes is sufficiently significant to be called a "useful" improvement over existing techniques.

  Despite the possible variety of definitions of novelty and usefulness, the concept of "non- obviousness" is the most complex of the three and is subject to broad and often inexact interpretation. For example, it might be argued that a new method of controlling protein production in bacteria is obvious in the face of prior art because it relies on a collection of well-known, existing, and proven concepts. Conversely, one could argue that the same method is not obvious because certain specific elements of the method yield surprising, unexpected results. Judging what is obvious to one of "ordinary skill" in an art is rarely straightforward, especially in technologically complex fields.

  These three criteria are usually the focal point of the patent office's evaluation of patent applications, and in particular, "obviousness" is most frequently cited by patent examiners as the reason an invention is rejected.

  Finally, patent law states that inventions may be patented if they have been reduced to practice, even if a physical embodiment of the invention has not been realized. Therefore, some extrapolation about an inventive concept can be included in a patent application. The extent of permissible extrapolation, however, may be the subject of dispute with the patent office. For example, an invention that claims a broad class of chemical compounds is rarely granted a patent, unless evidence is presented that several different representative members of the class have actually been made. A claim even to a single new compound usually must include a detailed description of its actual synthesis in order to receive patent protection. In the case of machines or mechanical devices, the requirements of the patent office are much less strict.

• Plant Variety Protection Certificates. Sexually propagated cultivars that are distinctive, uniform, and true breeding can be protected under the Plant Variety Protection Act of 1970. Such certificates provide protection only for the named cultivar. The Act provides a research exemption for the use of the protected cultivar in breeding programs.
• Tangible Research Property. Tangible research property includes research results in a tangible form, such as integrated circuit chips, computer software, biological organisms, engineering prototypes, engineering drawings, and other property that can be physically distributed. Tangible research property often, but not always, has intellectual property rights associated with it. Tangible research property also may be controlled and protected by distributing such property in accordance with certain terms and conditions. Such terms and conditions may be outlined in a contract, agreement, or license.
• Trade Secret and Know-How. Trade secret protection may be available under state law for technical or business information, including formulae, processes, and devices used or usable to achieve a competitive advantage in a trade or business and not publicly available. Trade secrets may be retained for a brief period of time for specific purposes, such as to allow for the preservation of rights to file a patent application. Know-how is often associated with tangible research property. Know-how may include detailed and specific information regarding how to manipulate specific biological materials or create and maintain specific devices. Know-how of this nature seldom warrants publication because of its restricted application. Such know-how may be extremely valuable to licensees or developers of tangible research property.
• Trade and Service Marks. A trade or service mark is a word, name, symbol, or device (or any combination) adopted by an organization to identify its goods or services and distinguish them from the goods and services of others. The mark is associated with goods or services in commerce. It is possible to register a mark prior to commercialization of the goods or service, but commercialization has to be achieved within a certain time frame.

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Licensing Intellectual Property

The UGARF staff works with the originator to identify and pursue licensing opportunities. The originator is often aware of, familiar with, or in direct contact with the companies most likely to have an interest in the intellectual property. The UGARF staff has experience in several areas and has access to databases of corporations, their products, and contact personnel. UGARF also is a member of and participant in licensing associations.

Initial communication with potential licensees normally is based on a non-confidential summary of the intellectual property. Interested companies are then requested to sign a Confidentiality Agreement before receiving confidential information, such as the patent application and access to the inventor for discussion.

The involvement of inventors is encouraged and supported, and is usually essential to successful licensing. However, inventors should limit their communication with a company until a Confidentiality Agreement has been signed.

The invention summary is generally made available to a targeted list of companies and will be included in listings of available technology that are more widely distributed.

A License Agreement normally contains:

A license fee, the value of which relates to the value of the intellectual property and the research cost leading to the intellectual property.
A running royalty, the size of which is dictated by the value of the intellectual property and the type of margin normal to that particular industry;
Reimbursement of past and future patent costs; and
Due diligence terms to allow UGARF to terminate the license if the licensee does not exploit the intellectual property. Terms may include yearly payments during development prior to sale of the product and minimal royalty payments set at a level to allow development of the product and the market while dissuading the licensee from just sitting on the intellectual property.

In addition to a license or option agreement being executed, the licensee also needs to establish a close working relationship with the inventors to transfer know-how regarding the technology and provide for further development and commercialization. This can be accomplished via a companion sponsored research agreement, a consulting agreement or hiring students who worked on the project.

Certain intellectual property may be exploited best through the formation of a new company specifically dedicated to the development and commercialization of the intellectual property. The originator is usually the best "champion" of the intellectual property and may wish to commit time, effort, and resources to commercialization. UGARF will work with the originator to discuss the opportunity, will negotiate a license to the inventor's new company, and assist the inventor by providing links to services of capital and information for entrepreneurs.
 

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UGA faculty and staff members agree, as a condition of employment, to abide by the Intellectual Property Policy of the University of Georgia and the University System of Georgia.

Rights in intellectual property developed during the course of sponsored research are determined in accordance with the applicable grant or contract. Therefore, it is important to analyze each contract or grant with respect to the allocation of intellectual property rights. Most research performed at UGA is sponsored by the federal government, which typically allows UGA to elect title to the intellectual property. Rights to intellectual property technology developed with industrial support are determined by the contractual arrangement with the sponsor. It is the policy of UGARF to retain rights and to grant industrial sponsors an option to acquire a license to exploit commercially the technology developed during a sponsored research project.

Ownership of intellectual property developed as a result of a UGA-assigned effort resides with UGA. A faculty member’s or student’s general obligation to produce scholarly and creative works does not usually constitute a specific UGA assignment.

Ownership of intellectual property developed by UGA personnel through an effort that makes significant use of UGA resources (called UGA-assisted individual efforts) shall be shared by the originator and UGA. In general the UGA shall not construe the provision of office space, access to library resources, or off-line office computers as constituting significant use of UGA resources. Significant use of UGA resources shall include, but not be limited to, use of research funding, use of UGA-paid time within the employment period, use of support staff, use of telecommunication services, and use of facilities other than office or library resources.

Ownership of intellectual property generated entirely on personal time and solely as a result of individual initiative, and not involving the use of UGA facilities or resources, resides with the individual. It is the responsibility of the individual to demonstrate that such intellectual property made, discovered, or developed while the individual is employed by UGA meets these required criteria.

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The UGARF staff works with the originator to decide the most appropriate method of protecting intellectual property. The sole purpose of UGARF in pursuing such protection is to facilitate the commercialization of a product, technology, or service.

The Invention Disclosure is reviewed to determine the probability that meaningful protection can be achieved and whether the idea has sufficient commercial appeal to be the basis of a partnership with a company capable of producing and marketing products or processes based on the intellectual property.

The costs for filing and prosecuting a patent in the United States may range from $7,000 to $15,000. Foreign protection can easily amount to $50,000. These costs are covered by UGARF until a license is signed. The costs involved in patent protection are then reimbursed to UGARF by the company. However, UGARF will initiate patent protection in the absence of an interested commercial partner if the review is positive. Patents cannot, therefore, be considered in the same mode as publications, and patents are not pursued simply to improve the content of a curriculum vitae.

As part of the review, it is often necessary initially to obtain a patentability opinion. This assesses whether the invention contains sufficient novelty, use, and non-obviousness, and it advises on the type of claims that may be possible. One possible problem is the prior art that has been disclosed in earlier publications of the inventor. The opinion includes information on issued or published patents related to the invention, but unless specifically requested, it does not address the issue of dominant patents. An invention may be patentable, but it may be dominated by broader claims of an earlier patent. When an invention is judged to be both patentable and commercially attractive, a U.S. patent application will be drafted and filed. If UGARF decides against seeking patent protection, then the inventor will be offered the opportunity to file at the individual's own expense, and the invention will be assigned to the inventor. The patent application, which is submitted on behalf of the inventor and UGARF by outside patent counsel, consists of the following:

An abstract;

The "specification," a text section that explains the invention's history, describes it in broad terms, and teaches the public how to make and use it; and

The "claims," which are precise, numbered statements describing exactly what the inventor claims as the invention.

In approximately six to 18 months, the patent office issues its first "office action" or reply to the initial patent application. This first office action usually rejects most or all of the inventor's claims on the grounds of obviousness and cites several references, either issued patents or scientific papers, to support this contention. The inventor and patent attorney then must argue that the references do not render the invention obvious. This basic give-and-take continues until a patent is either granted or denied; the entire process can take anywhere from 18 months to 10 years.

If the U.S. patent application precedes all public disclosure, a decision whether to file for patent protection outside the United States must be made within one year of the U.S. filing. Because of the very significant costs involved, UGARF only pursues foreign protection if a license has been signed or if there is a good chance of signing a license.

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The UGA Intellectual Property Policy requires that all intellectual property developed during the course of one’s activities as a UGA employee be formally reported to UGARF. The Invention Disclosure, available from UGARF, must be completed, signed, and returned to UGARF so that patenting or other means of protection can be explored. If appropriate, a case for individual ownership of the intellectual property should accompany the Invention Disclosure.
 
It is important to submit an Invention Disclosure as soon as an inventive concept can be described fully and precisely, even if a physical embodiment of the idea has not been realized. If the invention meets patent law requirements and appears to be commercially attractive, a patent application may be filed before the actual reduction to practice. (UGARF Forms)

In addition to providing a precise description of the intellectual property in the Intellectual Property Report, the originator (inventor, author, creator, etc.) should take special care to list all the others who made a creative contribution to the inventive concept. Individuals who carried out work at the direction of those creating the concept ordinarily should not be designated as inventors.

It is UGA policy that faculty members must remain free to disseminate the results of their research as they wish. However, faculty members should be aware that publication or public disclosure affects patentability. The UGARF staff is available to help clarify questions in this area. In terms of patent law, the publication or public disclosure of an invention means the non-confidential transfer of knowledge, orally or in writing, by exhibits, demonstrations, or public use of the invention that would permit others skilled in the art to duplicate it without undue experimentation. Abstracts, theses, typewritten papers, and slides or other materials that are projected, distributed, or discussed at non-confidential meetings, conferences, seminars, or forums are examples of what may constitute publication or public disclosure.

The dates of existing or planned publications or presentations that are requested in the Intellectual Property Report are critical in determining the patentability of an invention and the time frame in which a patent application must be made. In the United States, patent applications may be filed up to one year after an invention's first public disclosure. In contrast, most foreign countries require patent applications be filed before any public disclosure of an invention is made. Further, because most foreign countries have very broad definitions of public disclosure, even the most casual disclosures of inventions can eliminate the possibility of patent protection. Despite these strict rules, if a U.S. patent application is filed before any publication, most foreign countries permit filing of corresponding applications for up to one year after the U.S. filing date, even if a publication of the invention was made after the U.S. filing. Therefore, a U.S. patent application filing prior to any publication preserves both U.S. and foreign patent rights.

If you think you have an invention that may be patentable, please contact UGARF (542-5944 or ugarf@uga.edu). After an Invention Disclosure is received, an appointment will be set up to discuss and evaluate your innovation. The UGARF staff accepts all information on a confidential basis.

Copyrightable materials owned by the university as a result of sponsored research, specific university assignments, or use of UGA personnel or resources should be disclosed to UGARF. The UGARF staff will work with the author to determine the appropriate mechanism for further distribution of the work. In many cases the author may provide the best method of transferring the intellectual property to the public. UGARF may assign its rights to the author who may then negotiate with a publisher to produce a book.

Plant Varieties may be protected by plant patents or plant variety protection certificates. The UGARF staff works with plant breeders to obtain the appropriate protection for varieties developed at UGA.

The UGARF staff will work with the inventor to assess the commercial potential, and, where necessary, will consult with other authorities on a confidential basis.
 

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THE RESEARCH AWARDS PROGRAM

Anderson (Robert C.) Memorial Award

Recent UGA graduate students are eligible for the Robert C. Anderson Memorial Award. Two awards are given, one in the natural sciences and one in another field. The award is based on originality, creativity, and productivity. Candidates should possess an outstanding record of research performed while a graduate student and during the period immediately following receipt of the terminal degree. Criteria include the scope and difficulty of the research, innovation and independent thought, development of new ideas, techniques, and methodology, and the significance of the candidate's research.

Creative Research Awards

Each year, UGARF solicits nominations for Creative Research Awards from all areas of UGA research and creative activity. Three awards are given: the Albert Christ-Janer Award for outstanding contributions in the creative arts and humanities; the Lamar Dodd Award for outstanding contributions in the sciences; and the William A. Owens Award for outstanding contributions in the social and behavioral sciences.

Nominations must be based upon an accumulation of outstanding research or creative activities that have received national and/or international recognition. Any group of five faculty members may make nominations, and the group may include department heads, deans, and vice presidents. Nominees must have completed at least five years of service at UGA.

Specific guidelines on preparing a nomination are available from UGARF on the UGARF forms page or e-mail UGARF at ugarf@uga.edu or call for more information (706) 542-5969.
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Creative Research Medals

Each year, faculty are awarded Creative Research Medals based upon a research project or creative activity with a single coherent theme or identifiable focus of creativity. The principal thrust of the project must have occurred within the past five years and should be identified with the UGA. Faculty members, active or emeritus, are eligible and an individual who receives a medal may be nominated for another medal five or more years after the first award. Nominations may be made by a department, school, college, or other appropriate unit; where circumstances dictate, a nomination may be made by a group of faculty members. For specific format guidelines on submitting a nomination, please go to the UGARF forms page or contact the UGARF, ugarf@uga.edu, and (706) 542-5969.

Inventor's Award

The Inventor's Award was established to recognize an inventor's unique and creative contribution to the UGA. Members of the UGARF Board of Directors evaluate inventions and recommend the award based on creativity, innovativeness, and impact on society.

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RESEARCH GRANTS AND SUPPORT

Faculty Research Grants (Updated Summer 2002)

The Faculty Research Grants program encourages junior faculty to develop strong programs of research and creative scholarship. In this sense, grants may be considered "seed money" for research leading to the growth and development of continuing research programs.

Eligibility for Faculty Research Grants is limited to tenure-track UGA instructors and assistant professors and to assistant research scientists. Temporary, visiting, adjunct, or part-time faculty are not eligible, nor are postdoctoral associates.

Only one proposal, including joint proposals, may be submitted annually by an eligible individual. Proposals may not be submitted by an individual who has an active (one for which an initial report has not been completed) Faculty Research Grant. The application deadline for Faculty Research Grants is the 1st Tuesday in October. Application forms and additional information are available on the UGARF forms page and from the UGARF, ugarf@uga.edu or (706) 542-5969. For information and submission of proposals in the Humanities and Arts, contact the Center for Humanities and Arts: www.cha.uga.edu.

Foreign Travel Support

The Foreign Travel Support program provides financial assistance for travel to meetings held outside the United States. Faculty members, research professionals, postdoctoral associates, and graduate students are eligible. A faculty committee evaluates requests, giving priority to the meeting's importance and the significance of the individual's participation. In general, significant international meetings and congresses will receive higher priority than annual meetings of membership organizations. Priority will be given to those invited to present research papers, performances, or exhibits. For example, a specific invitation to give a plenary lecture will receive preference over presentation of a paper that is routinely accepted upon submission.

Awards are limited to one round-trip air fare at the lowest available price to the major international airport nearest the meeting site. Documentation of participation (letter of invitation, copy of program, etc.) and endorsement of department head and dean are required. Normally some commitment of funds by the department, school or college, research grant, or (for graduate students) the Graduate School will be expected.

Applications are available on the UGARF forms page and from the UGARF, ugarf@uga.edu or (706) 542-5930, and should be submitted according to the following schedule:

Plant Variety Improvement

The UGARF provides financial support of research projects designed to promote the development of new plant cultivars. This program is supported with funds derived from revenues generated from the commercialization of plant cultivars developed at the UGA. The rationale for this program is that faculty involved in breeding new plant cultivars have fewer sources of research support than other faculty in the more basic sciences. The program should serve as a catalyst to increase support from both private and public sources.

Eligibility for the Cultivar Development Research Grants in the College of Agricultural and Environmental Sciences is limited to tenure-track appointments, to USDA adjunct positions, and to individuals holding the appointment of permanent research scientist in the UGA "Research Professionals" classification system. Only one proposal may be submitted by any eligible individual proposer as the Principal Investigator. However, it is appropriate that the relevant plant breeder be associated with each proposal as a junior investigator. Application forms and additional information are available on the UGARF forms page and from the UGARF, ugarf@uga.edu or (706) 542-5942.
 

Senior Faculty Research Grants in the Humanities and Fine Arts (Updated Summer 2002)

The Senior Faculty Research Grants in the Humanities and Fine Arts program was created because fewer sources of external research support are available to senior faculty in these areas. This program acknowledges that exemplary work in the humanities and fine arts is important to the University of Georgia and will increase if there is support to advance and disseminate knowledge generated by senior faculty members. Furthermore, advancement and dissemination of such knowledge should be used as a catalyst to increase support from both private and public sources.

Eligibility for Senior Faculty Research Grants in the Humanities and Fine Arts is limited to associate and full professors at the UGA. Temporary, visiting, adjunct, or part-time faculty are not eligible.

Only one proposal, including joint proposals, may be submitted annually by an eligible individual. Proposals may not be submitted by an individual who has an active (one for which an initial report has not been completed) Senior Faculty Research Grant in the Humanities and Fine Arts or an active Faculty Research Grant. The application deadline is the 1st Tuesday in October. Application forms and additional information are available from the Center for the Humanities and Arts at www.cha.uga.edu.
 

For additional information please see the Research Policies and Procedures Table of Contents.

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