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

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

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

9 Copyright 2014. All rights reserved. Applied Research Associates, Inc. Project Tasks and Activities 1.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.

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

13 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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 Copyright 2014. All rights reserved. Applied Research Associates, Inc. Origin of Intellectual Property Adapted from Sullivan and Edvinsson, “ A Model for Managing Intellectual Capital.”, Technology Licensing, 1996.

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

22 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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)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.

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

27 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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 Copyright 2014. All rights reserved. Applied Research Associates, Inc. Types of Copyrightable Works  Articles, novels, works of nonfiction  Training materials  Public service announcements  Building and Engineering documents  State maps  Architectural works

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

34 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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 copyrighthttp://www.copyright.gov  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.

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

44 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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).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.

45 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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”

47 Copyright 2014. All rights reserved. Applied Research Associates, Inc. What is a Trade Secret? A trade secret constitutes confidential information that confers an economic advantage. Its value is derived from its secrecy.

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

50 Copyright 2014. All rights reserved. Applied Research Associates, Inc. IP Within a State Department of Transportation ResearchMaterialsLegalTransit  Method of testing (patent)  Products or devices (patent)  Treatise (copyright)  Method of testing (patent)  Products or devices (patent)  Slogans (trademark)  Databases (copyright)  Arrangement of facts (copyright)  Logo (trademark)  Names of products and services (trademark) SafetyTrafficMotor VehiclesDesign  Cartoon characters (copyright)  PSA (copyright)  Training materials (copyright)  Databases (copyright)  Slogans (trademark)  Software titles (trademark)  Software w/ algorithms (patent)  Databases (copyright)  Architectural drawings (copyright)

51 Copyright 2014. All rights reserved. Applied Research Associates, Inc. IP Within a State Department of Transportation ConstructionMaintenanceOperations  Engineering designs/plans (copyright)  Products or devices (patent)  Blueprints (copyright)  Method of testing (patent)  Training materials (copyright)  Products or devices (patent)  Training material (copyright)

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

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

57 Copyright 2014. All rights reserved. Applied Research Associates, Inc. Definition of Intellectual Property (IP) Management Realizing value through strategic and tactical options embedded in intellectual property rights (IPRs)

58 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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])

60 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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).http://www.fhwa.dot.gov/programadmin/contracts/011106qa.cfm  Maximizing taxpayer value - the return on taxpayer dollars.

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

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

69 Copyright 2014. All rights reserved. Applied Research Associates, Inc. Operational Models Technology Disclosure Technology Screening 4-6 weeks Technology Decision? Dedicate to Public 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

73 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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 Copyright 2014. All rights reserved. Applied Research Associates, Inc. Funding Allocation Structure Significant percentage of projects are impacted by Bayh-Dole due to some portion of federal dollars.

79 Copyright 2014. All rights reserved. Applied Research Associates, Inc. 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?

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

84 Copyright 2014. All rights reserved. Applied Research Associates, Inc. Preparing for IP Management for a State DOT  Policy development  Intellectual property management process/procedure  Training  Support materials (e.g., checklist, sample documents)

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

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

94 Copyright 2014. All rights reserved. Applied Research Associates, Inc. Supporting Materials  Non-Disclosure Agreements  IP Disclosure Forms  IP Management Checklists  Contractor Assignment Agreements  Employee Assignment Agreements  Teaming Agreements

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

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

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

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