07 LC 14
9671S
The
House Committee on Higher Education offers the following substitute to HB
474:
A
BILL TO BE ENTITLED
AN ACT
AN ACT
To
amend Part 2 of Article 2 of Chapter 3 of Title 20 of the Official Code of
Georgia Annotated, relating to the University System of Georgia, so as to
provide for the ownership of intellectual properties developed at or by
institutions of the University System of Georgia; to provide for the assignment,
transfer, license, or other authorization to use such intellectual property; to
create the State Intellectual Properties Board and provide for its membership;
to provide definitions; to provide for related matters; to repeal conflicting
laws; and for other purposes.
BE
IT ENACTED BY THE GENERAL ASSEMBLY OF GEORGIA:
SECTION
1.
Part
2 of Article 2 of Chapter 3 of Title 20 of the Official Code of Georgia
Annotated, relating to the University System of Georgia, is amended by adding a
new Code section to read as follows:
"20-3-88.
(a)
As used in this Code section, the term:
(1)
'Board' means the State Intellectual Properties Board.
(2)
'Computer program' means 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.
(3)
'Intellectual property' means patentable materials, software, and trade secrets,
whether or not formal protection is sought.
(4)
'Novel plant variety' means a novel variety of sexually reproduced
plant.
(5)
'Patentable materials' means items other than software which 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.
(6)
'Patentable plant' means an asexually reproduced distinct and new variety of
plant.
(7)
'Software' means 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.
(8)
'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:
(A)
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
(B)
Is the subject of efforts that are reasonable under the circumstances to
maintain its secrecy.
(b)(1)
Intellectual property that is produced as a result of work performed pursuant to
a grant or contract between a sponsor and an institution of the University
System of Georgia may contain specific provisions with respect to disposition of
rights to such intellectual property. The sponsor may:
(A)
Specify that the materials be placed in the public domain;
(B)
Claim reproduction, license-free use, or other rights; or
(C)
Assign all rights to the intellectual property to the State of
Georgia.
In
those cases where royalty income is realized by the State of Georgia, the
inventor or creator of the intellectual property may share in the royalty
income. The nature and extent of inventor or creator participation in royalty
income, however, shall be subject to the regulations or limitations of the
sponsor and the State of Georgia.
(2)
Intellectual property that is developed as a result of assigned efforts of an
institution of the University System of Georgia shall belong to the State of
Georgia; however, sharing of royalty income with the inventor or creator by the
State of Georgia is authorized as an incentive to encourage further development
of intellectual properties. The nature and extent of inventor or creator
participation in royalty income, however, shall be subject to the rules and
regulations of the State of Georgia.
(3)
Intellectual property that is developed by faculty, staff, or students of an
institution of the University System of Georgia where the institution provides
support of the efforts of such individuals or the use of institution 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
State of Georgia. The nature and extent of inventor or creator participation in
royalty income, however, shall be subject to the rules and regulations of the
State of Georgia.
(4)
Intellectual property that is developed by faculty, staff, or students of an
institution of the University System of Georgia shall belong to the inventor or
creator of such intellectual property provided that:
(A)
There is no use, except in a purely incidental way, of institution resources in
the creation of such intellectual property, unless such resources are available
without charge to the public;
(B)
The intellectual property is not prepared in accordance with the terms of an
institution contract or grant; and
(C)
The intellectual property is not developed by faculty, staff, or students as a
specific institution 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 the rules and regulations of the State
of Georgia and the board of regents and shall be determined by the State of
Georgia and the board of regents.
(5)
The ownership of intellectual property developed under any circumstances other
than those listed in paragraphs (1) through (4) shall be determined on an
individual basis and approved under policies or rules and regulations of the
board of regents. The nature and extent of inventor or creator participation in
royalty income, however, shall be subject to the rules and regulations of the
board of regents.
(c)
Intellectual property owned by the State of Georgia shall be managed and
protected for the benefit of the State of Georgia by the board of regents. The
board of regents shall not assign, transfer, license, or otherwise authorize the
use of intellectual property owned by the State of Georgia to any person or
entity residing or based outside of the State of Georgia as long as there are
persons or entities residing within the State of Georgia who can utilize or
develop the intellectual property. Prior to any university or subsidiary
offering for sale or for licensing any intellectual property produced as a
result of research subsidized, wholly or in part, by funds appropriated by the
State of Georgia, the opportunity to purchase or license the intellectual
property shall first be given to entities within the boundaries of the State of
Georgia. The board of regents may not utilize research and other foundations
associated with institutions of the University System of Georgia to assist in
the assignment, transfer, licensing, or other authorization of the use of
intellectual property unless first authorized by the State Intellectual
Properties Board. In the event that the State Intellectual Properties Board
approves any such contractual arrangement, such foundations shall also be
subject to the provisions of this Code section regarding the approval of all
assignments, transfers, licenses, or other authorizations to use intellectual
properties.
(d)
Prior to assigning, transferring, licensing, or otherwise authorizing the use of
intellectual property owned by the State of Georgia, such assignment, transfer,
license, or other authorization to use such intellectual property shall be
approved by the State Intellectual Properties Board. The State Intellectual
Properties Board shall consist of five members. Two of these members shall be
appointed by the Governor, one member shall be appointed by the Lieutenant
Governor, and one member shall be appointed by the Speaker of the House of
Representatives. The Governor shall designate one of the members as the
chairperson of the board. The two members appointed by the Governor shall serve
initial terms of two years and until their successors are appointed and
qualified and the members appointed by the Lieutenant Governor and the Speaker
of the House of Representatives shall serve initial terms of four years and
until their successors are appointed and qualified. Thereafter, all successors
shall be appointed to four-year terms of office and until their successors are
appointed and qualified. The appointed members shall hold a degree from a
four-year college or university or its equivalent and have some experience in
dealing with intellectual property matters. A vacancy in a position of a member
shall be filled by appointment of the original appointing authority for the
unexpired term. Appointed members shall serve without compensation but shall be
reimbursed for actual expenses incurred on the business of the board. The fifth
member of the board shall be the individual who developed the intellectual
property that is the subject of the proposed assignment, transfer, license, or
other authorization to use such intellectual property or, in the case of a
collaborative effort among several individuals in developing the intellectual
property, a representative of such group.
(e)
The State Intellectual Properties Board shall meet on the call of the
chairperson at any time that action of the board is necessary to fulfill the
purposes of this Code section.
(f)
In determining whether to approve a proposed assignment, transfer, license, or
other authorization to use intellectual property, the board shall determine if
such proposed assignment, transfer, license, or other authorization to use
intellectual property is in the best interests of the citizens of this state and
whether such proposed assignment, transfer, license, or other authorization to
use such intellectual property is in compliance with subsection (c) of this Code
section."
SECTION
2.
All
laws and parts of laws in conflict with this Act are repealed.