1. NCHRP 20-89 - Intellectual Property Management Guide for State Departments of Transportation

2. Project Team NCHRP Project Managing Director Andrew 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

3. Briefing Content Research Motivation & Objective
Research Approach & Tasks
Research Findings
Recommendations

4. Research Motivation & Objective

5. 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.

6. 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.

7. 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.

8. The WORK That was Done

9. Project Tasks and Activities
Collected and reviewed information/literature relevant to intellectual property, intellectual property management, and intellectual property law.
Surveyed state DOT personnel to assess current practices in managing intellectual property.
Investigated approaches to intellectual property management in comparable scientific and technical disciplines and similar organizations (e.g., universities, state DOTs, private organizations, public organizations).
Prepared an intellectual property management guidebook.
Prepared a final report.
Prepared a briefing on the overall research project.

10. 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.
correspondence with several organizations.
Surveys.
Reviewed IPM practices by both public and private organizations.

11. Research Findings Introduction to Intellectual Property

12. What is Intellectual Property?

13. 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)

14. Origin of Intellectual Property
Within any state DOT there is a wealth of intellectual capital from both employees and contractors. IP management is about transforming this intellectual capital into intellectual property, where value can be extracted.
Adapted from Sullivan and Edvinsson, “ A Model for Managing Intellectual Capital.”, Technology Licensing, 1996.

15. Principal Forms of Intellectual Property
Patent
Copyright
Trademark
Trade Secret
Why intellectual property rights?
The U.S. Constitution states:
Congress shall have the power…“to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." Article 1. Section 8, Clause 8, “Patent and Copyright Clause”

16. What is a Patent?

17. 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.

18. 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.

19. 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.

20. Criteria for Patent Non-obvious (35 U.S.C § 103)
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.

21. Types of Patentable Inventions
Machines
Processes
Methods
Compositions of matter
Articles of manufacture

22. 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

23. 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 (
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.
The claims define what attributes of the invention that the inventor(s) desires to protect. They are the basis for any case of infringement.
There are a number of patent applications. One vey important application is the provisional patent application. This application is important in terms of giving a priority date for an invention. Additionally, it gives the inventor a year to determine whether or not to file a non-provisional.

24. U.S. Patent Filing Timeline Example
This a patent timeline example. The time scales may vary in practice.

25. 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.

26. What is A copyright?

27. 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.

28. 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

29. Types of Copyrightable Works
Articles, novels, works of nonfiction
Training materials
Public service announcements
Building and Engineering documents
State maps
Architectural works

30. 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.

31. 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.

32. Copyright Notice
It is not necessary to place the copyright notice (since March 1, 1989). However, using a copyright notice puts others on notice that you are claiming copyright.
This makes it more difficult for an infringer to claim that he or she had no knowledge of infringement.

33. Special Cases in Copyright
Work Made For Hire
Fair Use Doctrine
First Sale Doctrine

34. 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.

35. 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

36. 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.

37. 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.

38. 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 ( 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.

39. What is a Trademark?

40. 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.

41. 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)

42. 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.

43. Criteria for Trademark
The mark is already in use in commerce.
There is the “intent to use” the mark in commerce.

44. 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 (
The application will be examined and the office action provided.
Trademark may be registered or rejected if it does not meet requirements.

45. 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”
The advantage of registering a trademark is that it enhances the owner’s ability to recover monetary damages in an infringement action.
The use of TM or SM is recommended if the trademark owner intends to claim common law rights or if waiting for its application to mature into registration. These markings indicate to potential infringers that the trademark owner understands the use of the mark as a trademark and may enforce its right.

46. What is a Trade Secret?

47. What is a Trade Secret?
A trade secret constitutes confidential information that confers an economic advantage. Its value is derived from its secrecy.

48. 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.
The organization must take reasonable steps to preserve the secrecy of the trade secret or confidential business information.
The organization should be proactive and take necessary steps to preserve the secrecy; otherwise, it is difficult to win a case in court.

49. Potential Types of Intellectual property FOR State Dots

50. 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)
Software titles (trademark)
Software w/ algorithms (patent)
Architectural drawings (copyright)

51. IP Within a State Department of Transportation
Construction
Maintenance
Operations
Engineering designs/plans (copyright)
Products or devices (patent)
Blueprints (copyright)
Method of testing (patent)
Training materials (copyright)
Training material (copyright)

52. What is Public Domain?

53. 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.

54. 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.
Low-cost access to IP refers to the option to use without transaction fees to an IP owner (licensing, etc.).
With “free” access to IP, many more minds can put it to use and create new innovations.
There is no overhead cost of protecting IP or defending IP against infringers.
Once the IP is in the public domain, no other party can seek protection on it.

55. 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.
Once IP is dedicated to the public domain, the creators of the IP no longer can control accessibility – how it is used, or who can use it. If there were any potential financial opportunities based on the IP, they are most likely now lost.

56. What is Intellectual Property Management?

57. Definition of Intellectual Property (IP) Management
Realizing value through strategic and tactical options embedded in intellectual property rights (IPRs)
Within IP law regarding patents, copyright and trademarks; there are certain rights. IP management is focused on understanding and using the protection offered by those rights to create value for your organization. Value could be defined many ways – financial, wide adoption, lives saved, etc. The way value is defined may vary among state DOTs.

58. 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])

59. Why is intellectual property management important To a State dot?

60. 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 (
Maximizing taxpayer value - the return on taxpayer dollars.

61. 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.

62. 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.

63. 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.

64. 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.
If a state DOT funds the development or creation of a protectable asset, but never protects the asset or proactively dedicates it to the public domain, a third party may possibly lay claim to the invention. Effective intellectual property management makes an organization aware of its potential intellectual property.

65. Intellectual Property Management PROCESS MODELS

66. Research Findings Common Structures, Practices, Operational Models

67. 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.

68. 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.
TI&T has its origins in the Office of Science and Technology Policy. Most organizations involved in intellectual property management or technology management have in place some form of a TI&T process.
As the organization embarks on managing intellectual property, it must assess what potential IP may exist and where this IP has been generated. The organization must follow a triage/evaluation process to assess the potential of its assets to identify if any should be protected as IP. Creating a marketing strategy for each asset forces the organization to assess the value of the potential IP.

69. Operational Models Technology Evaluation Process Diagram Monitor
Public License/
Freedom of
use agreement
Dedicate to
Public
Domain
Tech Transfer
-Copyright
-Patent
-Trademark
-Trade Secret
-Other
Technology
Disclosure
Technology
Screening
4-6 weeks
Technology
Decision?
Protect
Type of IP?
This is a flowchart that identifies the steps in the IP evaluation process. The typical entry point into the process is a disclosure form. This disclosure form could be submitted by employees, contractors, or others working on behalf of the organization.
STEP 1: Establishing a disclosure process. The entry point for identifying and documenting IP is the disclosure form. It is recommended that these forms are submitted and revised during periodic reviews of projects or other work activities being conducted by state DOT employees or by contractors working for or on behalf of the state.
STEP 2: Screening and review. During the screening and reviewing process there should be a minimum review of prior art (when applicable), assessment of the field of application, identification of the key features and benefits of the potential IP, identification of the expected users and key stakeholders, assessment of its value to the state DOT. Technology assessment (review of competitors, market analysis, review of similar and substitute technology) should be conducted on a case-by-case basis.
STEP 3: Making the decision. It is important that the decision-maker considers the various opportunities presented, in terms of social impact, financial impact, and overall long-term impact on the DOT. For the state DOT this decision will also be impacted by the source of funding used on projects or other activities performed by the state DOT employees or by contractors working for or on behalf of the state DOT. In the case of state-only funded activities, the DOT has more control over how IP is managed. In the case of mixed-funds and federal-only funds, the guidance for managing IP will be highly restricted by the Bayh-Dole Act.
Nothing:
Internal Use
Only

70. Operational Models
IP Management System (Davis and Harrison)

71. Operational Models IP Management Key Factors Analysis
The legal dimension is concerned with controlling and identifying protectable assets. It is important to be aware of issues surrounding IP laws and the expressed rights and privileges granted to IP owners. Also, it is important to document and review the use of third-party IP to minimize the risk of infringement. It is necessary to understand the principal forms of IP and which are applicable to specific types of inventions. It is necessary to establish a formal disclosure process to screen the results and deliverables from each activity/project to identify protectable assets. Finally, it is necessary to have model contracts to provide guidance regarding potential licensing negotiations and IP ownership issues.
The technical dimension is concerned with understanding the field of application of a protectable asset. The fields of application will likely impact which forms of IP protection are considered or even applicable. Additionally, it is important to understand the likelihood of the IP protection being adopted and implemented. The key is to address whether identifying, protecting, and managing a given asset as IP is worth the investment. It is important to understand if the target users have the complementary assets or organizational structure to successfully practice or use the IP (Teece, 1986).
The economical dimension is concerned with the economic impact of IP to the agency, general public, contractors, and other potential IP stakeholders. IPM can be an expensive endeavor. There are costs to acquire and maintain the protection (e.g., patent prosecution cost, maintenance cost). This life cycle cost will have a significant influence on the IPM strategy (e.g., IP audit, IP inventory). If IP is licensed, there is a cost associated with the license negotiation. After the license has been signed, there is a cost to monitor for compliance. A cost-benefit analysis which examines all options (e.g., patent life cycle cost, royalties from commercialization, or dedicating to the public domain) will be a key decision factor in pursuing IP protection.
The organizational dimension is concerned with establishing an IPM agenda and approach (i.e., the organization’s IPM policy). At minimum, this would include educating and training employees, as well as contractors, on IP issues that are critical to the IPM policy. Additionally, employees need to know how to recognize IP that may be of value to the organization and to understand their role in managing it, consistent with the IPM policy.

72. Research Findings Survey Results

73. 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.

74. Funding Allocation Structure
Sixty-nine percent of state DOT projects are funded by a mix of federal and state dollars. This may suggest that, in most cases, Bayh-Dole will apply if any IP is generated.
Bayh-Dole Act: The Bayh-Dole Act changed the ownership of inventions created using federal funding. Prior to Bayh-Dole, inventions made under federal grants and contracts were assigned to the federal government. With the passage of Bayh-Dole and additional amendments, universities, small businesses, not-for-profit, and for-profit entities working under federal funding can claim rights to an invention.
This gives a considerable stake in any IP to a contractor, for example, if federal funds were used to support the project.
Significant percentage of projects are impacted by Bayh-Dole
due to some portion of federal dollars.

75. State DOT Policy Guidance on IP
Although 32% of the respondents had an IP policy, these policies were mostly focused on protecting the state DOT’s right to use any subsequent IP. None of these policies looked at a comprehensive management of IP. For example, none of he policies offered a framework for exploring the many options for the value of a State DOT’s IP assets or determining in what industries other than transportation the IP may be useful.

76. IP Disputes with Third-party
Most respondents were unaware of any legal disputes over IP. If IP is only considered a legal asset to avoid or to will power in an infringement case, the organization is not considering the potential missed opportunities of considering IP as a strategic asset and proactively managing the asset.

77. State DOT Commercialization Efforts
Unfortunately, the descriptions were clipped by the survey software. Below are the specific descriptions
The State DOT\Transportation Agency actively applies for intellectual property
The State DOT\Transportation Agency actively assists its contractors in applying for intellectual property protection
The State DOT\Transportation Agency encourages the commercial use of its intellectual property
The State DOT\Transportation Agency does not involve itself in commercialization activities

78. Research Findings Key Questions Addressed by This Research

79. 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?
Other then ensuring access to IP developed using state DOT funding, outcomes could be in terms of economic development, job creation, etc.

80. Intellectual Property Management Recommendations A Process and Framework for State Departments of Transportation

81. 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.

82. 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.

83. Intellectual Property Management Process/Procedure

84. Preparing for IP Management for a State DOT
Policy development
Intellectual property management process/procedure
Training
Support materials (e.g., checklist, sample documents)

85. Intellectual Property Management Process

86. 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.

87. 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.

88. 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.

89. Choosing an IP Management Contractor

90. Intellectual Property Organizational Training
Along with creating and extracting value, another key emphasis is on risk management in terms of relationships with third parties (respecting others IP, protecting your IP, freedom of use, etc.)

91. 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.

92. Targeted Training with the State DOT

93. Materials to Support Proactive Intellectual Property Management

94. Supporting Materials Non-Disclosure Agreements IP Disclosure Forms
IP Management Checklists
Contractor Assignment Agreements
Employee Assignment Agreements
Teaming Agreements

95. Cost of Implementing Proactive Intellectual Property Management Practices

96. 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
Although some of the agencies that responded to the research survey had IP policies, none had really implemented an IP management program. Unfortunately, most of the cost literature was from well-established IP management/technology transfer offices at federal labs, universities, or private industries. It is recommended that state DOTs undertake a small pilot study which, at a minimum, would initiate training regarding IP management and establish a formal disclosure process for inventions and other materials that may be protectable as IP.
Many university technology management offices do not have enough royalty income to support themselves and thus must rely on funding as a type of budgeted cost center to academia.

97. SUMMARY – State Dot Intellectual property management

98. 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.

99. 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.

100. THANK YOU