NCHRP 20-89 - INTELLECTUAL PROPERTY MANAGEMENT GUIDE FOR STATE DEPARTMENTS OF TRANSPORTATION 1

NCHRP 20-89 - INTELLECTUAL PROPERTY MANAGEMENT GUIDE FOR

STATE DEPARTMENTS OF TRANSPORTATION

1

2Copyright 2014. All rights reserved. Applied Research Associates, Inc.

Project Team

NCHRP Project Managing DirectorAndrew Lemer

(previously) Crawford Jencks

Principal Investigator

Intellectual Property Management Strategy

Joe Bradley, ARA

Intellectual Property Law

Tim Wyatt, Conner Gwyn Schenck, PLLC

DOT Operations

Kevin Chesnik, ARA

Project Manager/Advisor Jag Mallela, ARA

Curt Beckemeyer, ARA


Briefing Content

Research Motivation & Objective

Research Approach & Tasks

Research Findings

Recommendations


RESEARCH MOTIVATION & OBJECTIVE


Research Motivating Situation

In 2008, the FHWA, AASHTO, and NCHRP sponsored a scan of international transportation research programs to access international practices and identify ways that the United States might benefit. One interesting finding was that, in European and Asian countries, IP was one measure of the effectiveness of transportation research programs and was viewed as a key to national economic growth.

U.S. transportation research organizations may benefit from an understanding of intellectual property risks, benefits, and management.


Research Objectives

The objective of this research is to develop an intellectual property management guide for state DOTs that will provide:• General definitions and background details

regarding intellectual property.• A framework for intellectual property

management.• A process/methodology for managing

intellectual property.


Project Scope

Define the nature and types of intellectual property.

Document laws that govern and impact intellectual

property and intellectual property management.

Document and suggest intellectual property

management strategies.

Define and formalize a process for identifying and

managing intellectual property assets.

Develop a practical guide for decision-makers.


THE WORK THAT WAS DONE


Project Tasks and Activities1. Collected and reviewed information/literature relevant to

intellectual property, intellectual property management, and intellectual property law.

2. Surveyed state DOT personnel to assess current practices in managing intellectual property.

3. Investigated approaches to intellectual property management in comparable scientific and technical disciplines and similar organizations (e.g., universities, state DOTs, private organizations, public organizations).

4. Prepared an intellectual property management guidebook. 5. Prepared a final report.6. Prepared a briefing on the overall research project.


Information Gathering Reviewed literature on intellectual property and intellectual

property management. • What is it?• Why is it important?• What are some methods of practice, policy, and overall goals?

Assessed current intellectual property management (IPM) practices within state DOTs along with discussions with RAC members.• Phone calls.• Email correspondence with several organizations.• Surveys.

Reviewed IPM practices by both public and private organizations.


RESEARCH FINDINGSINTRODUCTION TO INTELLECTUAL PROPERTY


WHAT IS INTELLECTUAL PROPERTY?


Definition of Intellectual Property

Intellectual property refers to the creative activities of literary, artistic, and scientific works, performances of performing artist, and broadcasts; inventions in all fields of human endeavor; scientific discoveries; industrial design; trademarks, service marks, and commercial names, designations, protection against unfair competition, and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.

(World Intellectual Property Organization (WIPO), 1967, Article 2)

Lamberton

Ok to edit to "trademarks," from "trademark;" ?


Origin of Intellectual Property

Adapted from Sullivan and Edvinsson, “ A Model for Managing Intellectual Capital.”, Technology Licensing, 1996 .


Principal Forms of Intellectual Property

Patent

Copyright

Trademark

Trade Secret


WHAT IS A PATENT?


What is a Patent?

A patent is a property right granted by the government to the inventor for a limited time in exchange for public disclosure of the invention. It allows the inventor to exclude others from making, using, offering for sale, selling the invention, or importing a claimed invention in the country where the asset is protected.


Types of Patents

Utility patent covers the functionality aspects of machines, processes, compositions of matter, and/or articles of manufacture. This is the most common type of patent and typically provides the most value and protection for a given invention.

Design patent covers the ornamental design of manufactured artifacts, not the process or methods of manufacture.

Plant patent cover new varieties of asexual reproducing plants, either invented or discovered.


Criteria for Patent

New (35 U.S.C § 102)The present invention cannot be covered in any prior art.

Prior art pertains to any subject matter prior to filing the patent application. The invention must not be published, be on sale, or be in use more than one year before the patent application filing date.

Useful (35 U.S.C § 101)The present invention must explicitly show that it will

achieve a particular benefit. The invention must not be immoral or contrary to public policy.


Criteria for Patent

Non-obvious (35 U.S.C § 103)The present invention must be creative or distinct enough

that an individual of ordinary skill in that relevant subject matter field would not be able to readily deduce the invention from publicly available resources.

Fully Disclosed (35 U.S.C § 112)The inventor must provide a description of the invention, the

manner and process of making and using the invention, and the best manner of practicing this invention that is known to the inventor.


Types of Patentable Inventions

Machines

Processes

Methods

Compositions of matter

Articles of manufacture

Lamberton

Delete "er" here?


What Does a Patent Grant?

A patent does not grant the following: Right to make. Right to use. Right to sell.

A patent grants the following: Right to exclude others from making, using, selling, or importing a

claimed invention. Limited-time monopoly right (in the U.S.).

• (20 years) – (prosecution time) = exclusivity rights lifetime


Obtaining a Patent Assess patentability of the invention

• Is it a machine, process, article of manufacturer, composition of matter, other artifact, etc.? Is it new, useful, non-obvious.

Draft patent application. This document will contain a description of the invention and the all important “claims” of the invention

Submit patent application and required fee payment to the U.S. Patent and Trademark Office (www.uspto.gov)

Respond to USPTO office action. The USPTO will respond with an office action after evaluating the patent application. They may accept all claims, reject all claims, or accept some and not others.

Ongoing correspondence with the USPTO until a patent is eventually granted or denied, or the application is abandoned.

If patent is granted, the inventor(s) pay the required fees and the patent it granted. There are appeal processes if patent is denied.

http://www.uspto.gov/


U.S. Patent Filing Timeline Example


Notice of Patent

The patentee may notify the public of the existence of the patent by adding the words "patented" or "U.S. Patent No." along with the patent number.

This notice is marked on the articles that are marketed or sold based on the patented invention.

Upon filing a non-provisional patent, the inventor may include the notice “Patent Pending” for the invention.


WHAT IS A COPYRIGHT?


What is a Copyright?

A copyright is a statutory privilege that grants a limited or mini-monopoly to a creator or author(s) of an original work of authorship fixed in a tangible or permanent means of expression. There are no registration requirements to lay claim to copyright authorship. A copyright may arise automatically without the need for a notice, publication, or registration. However, in the event of an infringement action, registration with the U.S. Copyright Office is required.


Copyrights

Copyright secures the author’s rights to control access to creative expression• Duplication• Distribution

Copyright allows creator(s) to exclude others from (w/o permission):• Reproducing• Adapting• Distributing• Performing• Displaying

Copyright Lifetime• Lifetime of author + 70 years• 95 years from first publication (corporations as authors)

Administration• U.S. Copyright Office in the Library of Congress


Types of Copyrightable Works

Articles, novels, works of nonfiction

Training materials

Public service announcements

Building and Engineering documents

State maps

Architectural works


Rights Afforded by Copyright Protection

To reproduce the work.

To distribute the work to the public.

To prepare derivative works.

To perform the work publicly.

To display the work publicly.

To digitally perform the work.


Criteria for Copyright

Be an original. The work must be independently developed by its author.

Meet a minimum level of creativity.

Be fixed in a tangible medium of expression. This is in terms that the expression can be perceived by the “lay” observer.


Copyright Notice


Special Cases in Copyright

Work Made For Hire

Fair Use Doctrine

First Sale Doctrine


Works Made For Hire

Copyright belongs to the party that commissioned the work.

Copyright belongs to the employer, when work is created by the employee in the course of performing work for the employer.


First Sale Doctrine

Limits the rights of a copyrighted work’s owner when a work is lawfully acquired.

Purchaser of a copy of a work generally has the right to:• Lend the work• Sell the work• Dispose of the work• Destroy the work


First Sale Doctrine

In the case of some digital content, the presumption is that purchasers are not generally entitled to resell or otherwise dispose of the work for commercial advantage. Digital content is oftentimes distributed via a license agreement, not an asset sale.• Limited purpose.• Nontransferable license for the purchaser’s private use.


Fair Use Doctrine

Certain publicly beneficial, noncommercial, and minimal uses of copyrighted material are “fair uses” and not infringement, even without consent of the copyright owner.

Fair use should not be assumed. Factors impacting fair use:

• The purpose and nature of the use.• The nature of the copyright.• The amount and substantiality of the portion used in relation to the

copyrighted work as a whole.• The effect of the use upon the potential market for or value of the

copyrighted work.


Obtaining a Copyright

Author(s) should decide whether or not to protect and enforce the rights in a copyrighted work.

If the author(s) desire to protect rights, the author should register the copyright.

Submit material to the U.S. Copyright Office (http://www.copyright.gov) for claim to copyright

If application was accepted, the author receives certificate of registration indicating that the work has been registered.

If application not accepted, the author receives a letter explaining why it has been rejected.

http://www.copyright.gov/

http://www.copyright.gov/


WHAT IS A TRADEMARK?


What is a Trademark?

Trademarks identify the source of a product or service without being descriptive of the product’s function or the type of product.

A trademark is a word, phrase, symbol, or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.


What is a Trademark?

Trademark is a broad term that may encompass a:• Service mark

• Collective mark

• Certification mark

• Trade name

• Trade dress (look & feel of product or service)


Purpose of a Trademark

Prevent competitors from stealing the goodwill that a company has established based on the quality and reputation of its products and services.

Ensure that consumers are not confused by products or services that would have similar sounding names or other similarity in attributes.


Criteria for Trademark

The mark is already in use in commerce.

There is the “intent to use” the mark in commerce.


Obtaining a Trademark

The mark should currently be in use or the creator has the intent to use the mark in commerce within six months.

File a trademark application with the U.S. Patent and Trademark Office (www.uspto.gov).

The application will be examined and the office action provided.

Trademark may be registered or rejected if it does not meet requirements.

http://www.uspto.gov/


Notice of Trademark

If registered -- Trademark owners give notice by inserting ® or “Registered in U.S. Patent and Trademark Office”

If not registered -- Trademark owners give notice by inserting “TM,” “Trademark,” or “SM,” “Service Mark”


WHAT IS A TRADE SECRET?


What is a Trade Secret?

A trade secret constitutes confidential information that confers an economic advantage. Its value is derived from its secrecy.


Protecting a Trade Secret

Mark as “secret,” “restricted,” “confidential,” or any word or phrase that signals that the information is meant to be kept private.

Keep locked in a secure place or restricted area, either by physical or digital means, whichever is most applicable.

Dispose of in a very controlled manner.


POTENTIAL TYPES OF INTELLECTUAL PROPERTY FOR STATE DOTS


IP Within a State Department of Transportation Research Materials Legal Transit

Method of testing (patent)

Products or devices (patent)

Treatise (copyright)



Slogans (trademark)

Databases (copyright)

Arrangement of facts (copyright)

Logo (trademark)

Names of products and services (trademark)

Safety Traffic Motor Vehicles Design Cartoon

characters (copyright)

PSA (copyright) Training

materials (copyright)


Slogans (trademark)

Software titles (trademark)

Software w/ algorithms (patent)


Architectural drawings (copyright)


IP Within a State Department of Transportation

Construction Maintenance Operations Engineering

designs/plans (copyright)


Blueprints (copyright)


Training materials (copyright)


Training material (copyright)

Training material (copyright)


WHAT IS PUBLIC DOMAIN?


Definition of Public Domain

The public domain refers to information, of varying types, that is free for anyone to use. This information may have never been protected or may have entered the public domain upon expiration of one of the principal forms of IP protection.


Benefits of Dedicating Intellectual Property to the Public Domain

Enabling low-cost access to information without the need to locate an owner of IP rights.

Promoting and expanding education through the spread of ideas, inventions, and discoveries.

Restricting another party from claiming IP rights to a creation.

Enabling competitive imitation.

Promoting innovation without the cost of IP protection and defending protected IP.


Risk of Dedicating Intellectual Property to the Public Domain

Loss of control over intellectual property – who is granted rights to use the IP?

Forfeit economic gain and/or sustainable competitive advantage.


WHAT IS INTELLECTUAL PROPERTY MANAGEMENT?


Definition of Intellectual Property (IP) Management

Realizing value through strategic and tactical options embedded in intellectual property rights (IPRs)


Definition of Intellectual Property Rights

IPR refers to the legally binding rights given to person(s) in regards to their creation. The creator is typically given an exclusive right over the use of his/her creation for a certain period of time.

The use of these rights by others must be authorized by the creator or any other owner of those rights.

(World Intellectual Property Organization [WIPO])


WHY IS INTELLECTUAL PROPERTY MANAGEMENT IMPORTANT TO A STATE DOT?


Why IPM Should Be Important to a State DOT

Risk management. Financial investments and numerous projects and activities that

may create intellectual property. Many of the IP-generating activities (value creation) are

outsourced (public-private partnerships). Guidance to employees, contractors, and consultants on issues of

IP management. FHWA policy guidelines for state DOTs regarding IP (http://

www.fhwa.dot.gov/programadmin/contracts/011106qa.cfm). Maximizing taxpayer value - the return on taxpayer dollars.

http://www.fhwa.dot.gov/programadmin/contracts/011106qa.cfm

http://www.fhwa.dot.gov/programadmin/contracts/011106qa.cfm


Maximizing Taxpayer Value

Taxes support the activities carried-out by state DOTs.

Outcomes from state DOT funded research and other activities should contribute to the public good (tax paying public).

IP management can support a state’s economic development and financial growth initiatives.

Intellectual property is a resource that should be managed just as

other transportation infrastructure (e.g., roadways, bridges, signs, etc.) is managed.


Benefits of Managing Intellectual Property

Maintain access to results derived from funded projects or employee inventors and creators.

Protect the interest and IP rights of others, including contractors and employees.

Shield state DOT contractors from IP infringement claims by other state DOT contractors or other third-party patent owners.

Identify contributions to the field by DOTs, including contractors and employee inventors.


Benefits of Managing Intellectual Property

Secure monetary compensation for use of the IP owned by the DOT.

Encourage investment in technology development and commercialization.

Avoid becoming “captive” to incumbent contractors with proprietary technology.

Provide a mechanism for outbound licensing of rights to IP.


Risk of Not Managing Intellectual Property

Inappropriate or unauthorized use of state DOT IP.

Liability if unknowingly using others’ IP without consent (e.g., a state DOT employee using copyrighted material found on the web).

A third party laying claim to IP that has been developed using state DOT funding.


INTELLECTUAL PROPERTY MANAGEMENT PROCESS MODELS


RESEARCH FINDINGSCOMMON STRUCTURES, PRACTICES, OPERATIONAL MODELS


Operating Structures

Many organizations have established independent operating units headed by an intellectual property executive/director.• The intellectual property executive may report to a

research administrator, a BoD, or a standing committee.

• Working within the operating units are technology managers/specialists, legal professionals, and other specializations like marketing.


Operational Models Technology Identification & Triage process (TI&T)

• Create a framework or outline of an organization’s assets.• Identify the technologies in each branch of that outline.• Define the technology and describe key management

related characteristics (what type, if any, of IP protection to pursue, etc.).

• Conduct a triage of the technologies in the portfolio to decide the appropriate and value maximizing disposition of each technology.

• Create a marketing strategy for every technology as if it were to be licensed or sold.


Operational Models

TechnologyDisclosure

Technology Screening4-6 weeks

TechnologyDecision?

Dedicate toPublic Domain

Nothing: Internal Use Only

Protect

Public License/Freedom of use agreement

Type of IP?-Copyright-Patent-Trademark-Trade Secret-Other

Tech Transfer

Monitor

Technology Evaluation Process Diagram


Operational Models

IP Management System (Davis and Harrison)


Operational Models IP Management Key Factors Analysis


RESEARCH FINDINGSSURVEY RESULTS


Survey The purpose of the survey was to assess the knowledge

of state DOT personnel on intellectual property management issues and practices.

The survey consisted of 26 questions. We had a 42% response rate. We targeted all U.S. state

DOTs. The responses suggest that there is a wide range of

opinions regarding IP management at a state DOT.


Funding Allocation Structure

Significant percentage of projects are impacted by Bayh-Dole due to some portion of federal dollars.


State DOT Policy Guidance on IP


IP Disputes with Third-party


State DOT Commercialization Efforts


RESEARCH FINDINGSKEY QUESTIONS ADDRESSED BY THIS RESEARCH


Research Key Questions

How can state DOTs best extract value from their investments in intellectual property and protect their interests?

How can state DOTs best provide core DOT services without incurring liability for the use of the intellectual property of others?

How is intellectual property management by a state DOT important for maximizing taxpayer value?

What should a state DOT strategy be regarding intellectual property management?


INTELLECTUAL PROPERTY MANAGEMENT RECOMMENDATIONSA PROCESS AND FRAMEWORK FOR STATE DEPARTMENTS OF TRANSPORTATION


State DOT IP Management Goals Ensure that state DOTs have continued access to

innovations developed with state DOT funding.

Obtain access (e.g., reciprocal licenses) to innovations developed by other public bodies (e.g., FHWA, other state DOTs, other state agencies).

Avoid becoming “captive” to incumbent contractors with proprietary technology.


State DOT IP Management Goals

Shield state DOT contractors from IP infringement claims by other state DOT contractors or third-party patent owner.

Encourage the most efficient methods to transfer new inventions/innovations to practice (perhaps economic growth).

Continue to support economic development in the state/nation.

Maximize taxpayer value – the return on taxpayer dollars.


INTELLECTUAL PROPERTY MANAGEMENT PROCESS/PROCEDURE


Preparing for IP Management for a State DOT

Policy development

Intellectual property management process/procedure

Training

Support materials (e.g., checklist, sample documents)


Intellectual Property Management Process


Key Steps in the Process STEP 1: Identifying the person(s), organization, or maybe forming

an office that will be responsible for handling IP issues within the organization.

STEP 2: Identifying and documenting potential IP within the state DOT.

STEP 3: Establishing a disclosure process and required documentation.

STEP 4: Screening and reviewing disclosures documents.


Key Steps in the Process

STEP 5: Making the decision on how the potential IP will be handled.

STEP 6: Technology transfer.

STEP 7: Monitoring intellectual property management results and performance.


External IP Management for the State DOT

Some state DOTs may decide to outsource management activities and responsibilities.

Things to consider in outsourcing for IP management services:• Contractor capability and reputation.• Contractor core competencies.• Contractor IPM experiences.• Contractor services offerings.


Choosing an IP Management ContractorDecision Factor Definition

Contractor capability and reputation

Need a firm that understands the transportation sector and the key factors of effective IPM

Contractor core competencies

Identify the areas in which the firm has experience. Is there experience and know-how in patents, copyrights, or trademarks?

What are the key technical areas of competency (materials, electronics, wireless, sensors etc.)?

Contractor IPM experiences What processes and procedures are in place to support the numerous IPM tasks?

Contractor service offerings Does the contractor offer IPM training? Is the contractor only an IP broker, or does this

organizational also engage in product/service development using third-party IP?

Does the contractor provide sublicensing services? Do we understand the business model of the

contractor? Does the contractor offer IP policing and

monitoring services?


INTELLECTUAL PROPERTY ORGANIZATIONAL TRAINING


Organizational Training

All levels of the state DOT should be informed of the importance of IP to the organization.

There should be targeted learning for each level of the organization.

This training may be performed by internal IP professionals and/or contracted to firms focused on organizational IP management training.


Targeted Training with the State DOTPersonnel Groups Training Focus

Researchers, Scientist Organizational IP policy guidelines and procedures

Importance of confidentiality, non-enabling descriptions of inventions

Basics of IP agreements relating to research

Basics on the forms of IP protection Submitting disclosures to IPM

office/personnel Operations Personnel (Finance, Human Resources, Legal)

IP royalty management and accounting Conflicts of interest Basics on the forms of IP protection IP contracts and agreements Mediation, arbitration, litigation, and

negotiation in IP Intellectual Property Managers IP contracts and agreements

Depth knowledge on the forms of IP protection

Reviewing technology disclosures IP negotiations and marketing IP licensing

Other Personnel Disclosures and confidentiality Basics on the forms of IP protection IP guidelines and procedures

Research Managers/Directors Basics on the forms of IP protection Implementing IP policy and procedures Benefits of proactive IPM Investment requirement for IPM

Executive Directors IP policy Investment requirement for IPM Benefits of proactive IPM IPM risks


MATERIALS TO SUPPORT PROACTIVE INTELLECTUAL PROPERTY MANAGEMENT


Supporting Materials Non-Disclosure Agreements

IP Disclosure Forms

IP Management Checklists

Contractor Assignment Agreements

Employee Assignment Agreements

Teaming Agreements


COST OF IMPLEMENTING PROACTIVE INTELLECTUAL PROPERTY MANAGEMENT PRACTICES


Cost of Implementing Intellectual Property Management Practices

The cost may vary considerably depending on the size and complexity of the IP management effort.

A review of universities and some public organizations that have well-established IP management offices have a staff ranging from 10 to 25 individuals and an annual budget from $100,000s to upwards of $10 million.

Most expenditures are for:• Operational cost• Salaries• IP fees• Outside counsel• Marketing• Licensing


SUMMARY – STATE DOT INTELLECTUAL PROPERTY MANAGEMENT


Summary Details

Each state DOT should first review the guidebook to establish a cursory understanding of IP and IP management, if unfamiliar with the subject matter.

Determine which IP assets could be managed as IP (this is not a one-size-fits-all approach).

Decide if IP should be managed internally or externally.


Summary Details Select a unit/department for a pilot study.

Implement some portions of the framework and processes (it is not a requirement to implement all at once).

Measure the outcome of whichever IP management tactics the organization has implemented.

Continue to implement more components of the guide as necessary.


THANK YOU

Documents

NCHRP 20-89 - INTELLECTUAL PROPERTY MANAGEMENT GUIDE FOR STATE DEPARTMENTS OF TRANSPORTATION 1