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NCHRP 20-89 - Intellectual Property Management Guide for St

1. Project Team . NCHRP Project Managing Director. Andrew. Lemer. (. previously. ). . Crawford Jencks. Principal Investigator. Intellectual. Property Management Strategy. Joe Bradley, ARA. Intellectual Property Law.

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NCHRP 20-89 - Intellectual Property Management Guide for St

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


Project Team

NCHRP Project Managing Director




previously) Crawford Jencks

Principal Investigator


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, ARASlide3

Briefing Content

Research Motivation & ObjectiveResearch Approach & TasksResearch FindingsRecommendationsSlide4

Research Motivation & ObjectiveSlide5

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. Slide6

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.Slide7

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.Slide8

The WORK That was DoneSlide9

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.Slide10

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. Slide11

Research FindingsIntroduction to Intellectual PropertySlide12

What is Intellectual Property?Slide13

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)Slide14

Origin of Intellectual Property

Adapted from Sullivan and Edvinsson, “ A Model for Managing Intellectual Capital.”, Technology Licensing, 1996.Slide15

Principal Forms of Intellectual Property

PatentCopyrightTrademarkTrade SecretSlide16

What is a Patent?Slide17

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.Slide18

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.Slide19

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.Slide20

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. Slide21

Types of Patentable Inventions

MachinesProcessesMethodsCompositions of matterArticles of manufactureSlide22

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 lifetimeSlide23

Obtaining a Patent

Assess patentability of the inventionIs 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 inventionSubmit 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.Slide24

U.S. Patent Filing Timeline ExampleSlide25

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.Slide26

What is A copyright?Slide27

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.Slide28


Copyright secures the author’s rights to control access to creative expressionDuplicationDistributionCopyright allows creator(s) to exclude others from (w/o permission):ReproducingAdaptingDistributingPerformingDisplaying Copyright LifetimeLifetime of author + 70 years95 years from first publication (corporations as authors)AdministrationU.S. Copyright Office in the Library of CongressSlide29

Types of Copyrightable Works

Articles, novels, works of nonfictionTraining materialsPublic service announcementsBuilding and Engineering documentsState mapsArchitectural worksSlide30

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.Slide31

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.Slide32

Copyright NoticeSlide33

Special Cases in Copyright

Work Made For HireFair Use Doctrine First Sale DoctrineSlide34

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. Slide35

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 workSell the workDispose of the workDestroy the workSlide36

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.Slide37

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.Slide38

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 copyrightIf 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. Slide39

What is a Trademark?Slide40

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.Slide41

What is a Trademark?

Trademark is a broad term that may encompass a:Service markCollective markCertification markTrade nameTrade dress (look & feel of product or service)Slide42

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.Slide43

Criteria for Trademark

The mark is already in use in commerce.There is the “intent to use” the mark in commerce.Slide44

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. Slide45

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”Slide46

What is a Trade Secret?Slide47

What is a Trade Secret?

A trade secret constitutes confidential information that confers an economic advantage. Its value is derived from its secrecy. Slide48

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.Slide49

Potential Types of Intellectual property FOR State DotsSlide50

IP Within a State Department of Transportation

ResearchMaterialsLegalTransitMethod of testing (



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 VehiclesDesignCartoon characters (copyright)PSA (copyright)Training materials (copyright)Databases (copyright

)Slogans (trademark

)Software titles (trademark)Software w/ algorithms (patent)

Databases (copyright)Architectural drawings (copyright)Slide51

IP Within a State Department of Transportation

ConstructionMaintenanceOperationsEngineering designs/plans (copyright)

Products or devices (



Blueprints (copyright)Method of testing (patent)Training materials (copyright)

Products or devices (patent)Training material (copyright)

Training material (copyright) Slide52

What is Public Domain?Slide53

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. Slide54

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.Slide55

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.Slide56

What is Intellectual Property Management?Slide57

Definition of Intellectual Property (IP) Management

Realizing value through strategic and tactical options embedded in intellectual property rights (IPRs)Slide58

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])Slide59

Why is intellectual property management important To a State dot?Slide60

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.Slide61

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.Slide62

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.Slide63

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.Slide64

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. Slide65

Intellectual Property Management PROCESS MODELSSlide66

Research FindingsCommon Structures, Practices, Operational ModelsSlide67

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.Slide68

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.Slide69

Operational Models





4-6 weeks


Decision?Dedicate to

Public DomainNothing: Internal Use OnlyProtectPublic License/Freedom of use agreementType of IP?-Copyright-Patent-Trademark-Trade Secret-OtherTech TransferMonitor

Technology Evaluation Process DiagramSlide70

Operational ModelsIP Management System (Davis and Harrison)Slide71

Operational Models

IP Management Key Factors AnalysisSlide72

Research FindingsSurvey ResultsSlide73


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. Slide74

Funding Allocation Structure

Significant percentage of projects are impacted by Bayh-Dole due to some portion of federal dollars.Slide75

State DOT Policy Guidance on IPSlide76

IP Disputes with Third-partySlide77

State DOT Commercialization EffortsSlide78

Research FindingsKey Questions Addressed by This ResearchSlide79

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?Slide80

Intellectual Property Management RecommendationsA Process and Framework for State Departments of TransportationSlide81

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.Slide82

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.Slide83

Intellectual Property Management Process/ProcedureSlide84

Preparing for IP Management for a State DOT

Policy developmentIntellectual property management process/procedureTrainingSupport materials (e.g., checklist, sample documents)Slide85

Intellectual Property Management ProcessSlide86

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.Slide87

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.Slide88

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.Slide89

Choosing an IP Management ContractorSlide90

Intellectual Property Organizational TrainingSlide91

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. Slide92

Targeted Training with the State DOTSlide93

Materials to Support Proactive Intellectual Property ManagementSlide94

Supporting Materials

Non-Disclosure AgreementsIP Disclosure FormsIP Management ChecklistsContractor Assignment AgreementsEmployee Assignment AgreementsTeaming Agreements Slide95

Cost of Implementing Proactive Intellectual Property Management PracticesSlide96

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 costSalariesIP feesOutside counselMarketingLicensingSlide97

SUMMARY – State Dot Intellectual property managementSlide98

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.Slide99

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.Slide100