NCHRP 20-89 - INTELLECTUAL
PROPERTY MANAGEMENT GUIDE FOR
STATE DEPARTMENTS OF
TRANSPORTATION
1
Project Team
NCHRP Project Managing Director
Andrew Lemer
(previously) Crawford Jencks
Principal Investigator
Intellectual Property
Management Strategy
Joe Bradley, ARA
Intellectual Property Law
DOT Operations
Tim Wyatt, Conner Gwyn
Schenck, PLLC
Kevin Chesnik, ARA
Project Manager/Advisor
Jag Mallela, ARA
Curt Beckemeyer, ARA
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Briefing Content
 Research Motivation & Objective
 Research Approach & Tasks
 Research Findings
 Recommendations
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RESEARCH MOTIVATION &
OBJECTIVE
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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.
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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.
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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.
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THE WORK THAT WAS DONE
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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.
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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.
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RESEARCH FINDINGS
INTRODUCTION TO INTELLECTUAL PROPERTY
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WHAT IS INTELLECTUAL PROPERTY?
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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)
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Origin of Intellectual Property
Adapted from Sullivan and Edvinsson, “ A Model for Managing Intellectual Capital.”, Technology Licensing, 1996.
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Principal Forms of Intellectual Property
 Patent
 Copyright
 Trademark
 Trade Secret
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WHAT IS A PATENT?
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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.
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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.
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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.
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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.
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Types of Patentable Inventions
 Machines
 Processes
 Methods
 Compositions of matter
 Articles of manufacture
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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
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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.
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U.S. Patent Filing Timeline Example
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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.
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WHAT IS A COPYRIGHT?
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What is a Copyright?
A copyright is a statutory privilege that grants a limited or minimonopoly 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.
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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
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Types of Copyrightable Works
 Articles, novels, works of nonfiction
 Training materials
 Public service announcements
 Building and Engineering documents
 State maps
 Architectural works
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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.
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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.
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Copyright Notice
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Special Cases in Copyright
 Work Made For Hire
 Fair Use Doctrine
 First Sale Doctrine
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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.
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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
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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.
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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.
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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.
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WHAT IS A TRADEMARK?
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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.
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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)
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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.
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Criteria for Trademark
 The mark is already in use in commerce.
 There is the “intent to use” the mark in commerce.
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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.
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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”
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WHAT IS A TRADE SECRET?
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What is a Trade Secret?
A trade secret constitutes confidential information that confers an
economic advantage. Its value is derived from its secrecy.
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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.
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POTENTIAL TYPES OF INTELLECTUAL
PROPERTY FOR STATE DOTS
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IP Within a State Department of Transportation






Research
Method of

testing (patent)
Products or

devices
(patent)
Treatise
(copyright)
Materials
Method of

testing (patent)
Products or

devices
(patent)

Legal
Slogans
(trademark)
Databases
(copyright)
Arrangement
of facts
(copyright)
 Logo
(trademark)
Motor Vehicles
 Software w/
algorithms
(patent)
 Databases
(copyright)
Safety
Cartoon

characters
(copyright)

PSA (copyright)
Training

materials
(copyright)
Traffic
Databases
(copyright)
Slogans
(trademark)
Software titles
(trademark)
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

Transit
Names of
products and
services
(trademark)
Design
Architectural
drawings
(copyright)
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IP Within a State Department of Transportation





Construction
Maintenance
Engineering
 Products or
designs/plans
devices
(copyright)
(patent)
Products or
 Training
devices
material
(patent)
(copyright)
Blueprints
(copyright)
Method of
testing (patent)
Training
materials
(copyright)

Operations
Training
material
(copyright)
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WHAT IS PUBLIC DOMAIN?
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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.
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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.
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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.
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WHAT IS INTELLECTUAL PROPERTY
MANAGEMENT?
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Definition of Intellectual Property (IP) Management
Realizing value through strategic and
tactical options embedded in intellectual
property rights (IPRs)
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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])
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WHY IS INTELLECTUAL PROPERTY
MANAGEMENT IMPORTANT TO A
STATE DOT?
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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.
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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.
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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.
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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.
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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.
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INTELLECTUAL PROPERTY
MANAGEMENT PROCESS MODELS
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RESEARCH FINDINGS
COMMON STRUCTURES, PRACTICES, OPERATIONAL MODELS
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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.
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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.
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Operational Models
 Technology Evaluation Process Diagram
Monitor
Dedicate to
Public
Domain
Technology
Disclosure
Technology
Screening
4-6 weeks
Technology
Decision?
Public License/
Freedom of
use agreement
Protect
Tech Transfer
Type of IP?
-Copyright
-Patent
-Trademark
-Trade Secret
-Other
Nothing:
Internal Use
Only
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Operational Models
 IP Management System (Davis and Harrison)
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Operational Models
 IP Management Key Factors Analysis
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RESEARCH FINDINGS
SURVEY RESULTS
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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.
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Funding Allocation Structure
Significant percentage of projects are impacted by Bayh-Dole
due to some portion of federal dollars.
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State DOT Policy Guidance on IP
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IP Disputes with Third-party
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State DOT Commercialization Efforts
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RESEARCH FINDINGS
KEY QUESTIONS ADDRESSED BY THIS RESEARCH
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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?
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INTELLECTUAL PROPERTY
MANAGEMENT RECOMMENDATIONS
A PROCESS AND FRAMEWORK FOR STATE DEPARTMENTS OF TRANSPORTATION
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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.
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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.
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INTELLECTUAL PROPERTY
MANAGEMENT PROCESS/PROCEDURE
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Preparing for IP Management for a State DOT
 Policy development
 Intellectual property management process/procedure
 Training
 Support materials (e.g., checklist, sample documents)
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Intellectual Property Management Process
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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.
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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.
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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.
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Choosing an IP Management Contractor
Decision Factor
Contractor capability and
reputation
Contractor core
competencies



Contractor IPM experiences

Contractor service offerings





Definition
Need a firm that understands the transportation
sector and the key factors of effective IPM
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.)?
What processes and procedures are in place to
support the numerous IPM tasks?
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?
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INTELLECTUAL PROPERTY
ORGANIZATIONAL TRAINING
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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.
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Targeted Training with the State DOT
Personnel Groups
Researchers, Scientist
Training Focus
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Operations Personnel (Finance, Human
Resources, Legal)
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Intellectual Property Managers
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Other Personnel
Research Managers/Directors
Executive Directors
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Organizational IP policy guidelines and
procedures
Importance of confidentiality, nonenabling descriptions of inventions
Basics of IP agreements relating to
research
Basics on the forms of IP protection
Submitting disclosures to IPM
office/personnel
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
IP contracts and agreements
Depth knowledge on the forms of IP
protection
Reviewing technology disclosures
IP negotiations and marketing
IP licensing
Disclosures and confidentiality
Basics on the forms of IP protection
IP guidelines and procedures
Basics on the forms of IP protection
Implementing IP policy and procedures
Benefits of proactive IPM
Investment requirement for IPM
IP policy
Investment requirement for IPM
Benefits of proactive IPM
IPM risks
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MATERIALS TO SUPPORT PROACTIVE
INTELLECTUAL PROPERTY
MANAGEMENT
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Supporting Materials
 Non-Disclosure Agreements
 IP Disclosure Forms
 IP Management Checklists
 Contractor Assignment Agreements
 Employee Assignment Agreements
 Teaming Agreements
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COST OF IMPLEMENTING PROACTIVE
INTELLECTUAL PROPERTY
MANAGEMENT PRACTICES
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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:
•
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•
Operational cost
Salaries
IP fees
Outside counsel
Marketing
Licensing
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SUMMARY – STATE DOT INTELLECTUAL
PROPERTY MANAGEMENT
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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.
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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.
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THANK YOU
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