- Licensee's Objectives and Needs
- Georgia Tech's Objectives and Needs
- Commercial development for public benefit
- Share in the financial return
- Management of potential conflict of interest
- Conformity to government rules and regulations
- Indemnification
- Disclaimer, Warranty and Limitation of Liability g. Governing Law
- License Option
- Field(s) of use
- Exclusivity
- Term
- Diligence milestones
- Fees
- License Agreement
- Field(s) of use
- Exclusivity
- Term
- Sublicensing
- Fee
- Royalties
- Diligence milestones
Policies & Procedures for Industry
If you are a company interested in sponsoring research at Georgia Tech, please see the Industry Contracting Office web page.Our Process
Our aim is to enter into a mutually rewarding arrangement with our licensees. We recognize that most licensees will usually need to invest substantial time and resources before a commercial product or process is ready for market, and our licensing terms take that investment into consideration. Within the legal constraints imposed on us our terms are flexible and are tailored to match market realities. With over 150 new invention disclosures coming into our office each year, our portfolio is constantly changing. We encourage companies to check on our currently available technologies on a regular basis.
If you let us know of your specific interests, we'll let you know about new technologies which may become available in your area of interest.
A typical agenda for our first discussion with a Licensee is:
Our Policies
Intellectual Property
You can read Georgia Tech's Intellectual Property Policy at
http://www.academic.gatech.edu/handbook/. The IP Policy excerpt can be downloaded on the OTL page from our policies page.
Inventions Funded in Whole or In Part by U.S. government. Georgia Tech, in common with other research institutions, is subject to the Bayh-Dole Act which sets out the disposition of inventions made with Federal assistance. The Act provides that the institution may elect to retain title to inventions conceived or first reduced to practice in the performance of work under a Federal government agreement. Each such invention must be disclosed to the government sponsor. We must grant the U.S. government a royalty free license for governmental purposes, give preference to U.S manufacturers, give preference to small businesses, and share income with inventors. We must also periodically report our licensing activity to the government. We must adhere to these provisions regardless of how little Federal funding was utilized in the conception or development of the invention.
Internal Revenue Service Procedure 97-14
Guidelines for Research Agreements.
This IRS procedure is relevant in those cases where a research sponsor is seeking to acquire intellectual property rights to any invention which might emanate from the sponsored research, prior to the development of the invention. Generally it provides that the sponsor must pay a competitive price for rights to any invention. Potential sponsors can get further information on this procedure from the Industry Contracting Office. Licensing Faculty-Associated Companies. Georgia Tech must be sensitive to public perception when a faculty member is associated with a potential licensee company. While we encourage entrepreneurship and faculty involvement in start-up companies, we are aware of the faculty member's potential conflict of interest and must negotiate any such license agreement from an "arms-length" relationship. Full details of relevant conflict of interest issues can be viewed at by clicking here.
Indemnification
The State Attorney General has issued an opinion holding that State Agencies are prohibited from agreeing to indemnity and hold harmless clauses. This opinion is based on two provisions in the Georgia Constitution. GTRC will not normally agree to an indemnification provision either because GTRC has financial obligations to Georgia Tech, or as a non-profit corporation cannot keep reserves sufficient to cover any financial liability that might result from granting indemnity.
Warranty
The State Attorney General has advised that giving a warranty is in essence an indemnity in most cases. Therefore, Georgia Tech cannot agree to provide any type of warranty or indemnify a third party for any breach of representation or warranty. A related issue involving warranty relates to the fact that as an educational institution Georgia Tech performs research of an experimental nature and is not in the business of developing products, and cannot guarantee that a product will meet specifications or perform in a certain manner.
Governing Law
As a State Agency, Georgia Tech does not have the legal power or authority to contractually grant to a third party any right pertaining to potential litigation (such as venue). Therefore we ask that any agreement be governed by the laws of the State of Georgia.
