Management Guide to Intellectual Property for State Departments of Transportation (2015)

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N A T I O N A L C O O P E R A T I V E H I G H W A Y R E S E A R C H P R O G R A M NCHRP REPORT 799 Management Guide to Intellectual Property for State Departments of Transportation Joe Bradley Jagannath Mallela Kevin Chesnik Applied ReseARch AssociAtes, inc. Champaign, IL and Timothy Wyatt conneR Gwyn schenck, pllc Greensboro, NC Subscriber Categories Administration and Management • Law • Research TRANSPORTAT ION RESEARCH BOARD WASHINGTON, D.C. 2015 www.TRB.org Research sponsored by the American Association of State Highway and Transportation Officials in cooperation with the Federal Highway Administration

NATIONAL COOPERATIVE HIGHWAY RESEARCH PROGRAM Systematic, well-designed research provides the most effective approach to the solution of many problems facing highway administrators and engineers. Often, highway problems are of local interest and can best be studied by highway departments individually or in cooperation with their state universities and others. However, the accelerating growth of highway transportation develops increasingly complex problems of wide interest to highway authorities. These problems are best studied through a coordinated program of cooperative research. In recognition of these needs, the highway administrators of the American Association of State Highway and Transportation Officials initiated in 1962 an objective national highway research program employing modern scientific techniques. This program is supported on a continuing basis by funds from participating member states of the Association and it receives the full cooperation and support of the Federal Highway Administration, United States Department of Transportation. The Transportation Research Board of the National Academies was requested by the Association to administer the research program because of the Board’s recognized objectivity and understanding of modern research practices. The Board is uniquely suited for this purpose as it maintains an extensive committee structure from which authorities on any highway transportation subject may be drawn; it possesses avenues of communications and cooperation with federal, state and local governmental agencies, universities, and industry; its relationship to the National Research Council is an insurance of objectivity; it maintains a full-time research correlation staff of specialists in highway transportation matters to bring the findings of research directly to those who are in a position to use them. The program is developed on the basis of research needs identified by chief administrators of the highway and transportation departments and by committees of AASHTO. Each year, specific areas of research needs to be included in the program are proposed to the National Research Council and the Board by the American Association of State Highway and Transportation Officials. Research projects to fulfill these needs are defined by the Board, and qualified research agencies are selected from those that have submitted proposals. Administration and surveillance of research contracts are the responsibilities of the National Research Council and the Transportation Research Board. The needs for highway research are many, and the National Cooperative Highway Research Program can make significant contributions to the solution of highway transportation problems of mutual concern to many responsible groups. The program, however, is intended to complement rather than to substitute for or duplicate other highway research programs. Published reports of the NATIONAL COOPERATIVE HIGHWAY RESEARCH PROGRAM are available from: Transportation Research Board Business Office 500 Fifth Street, NW Washington, DC 20001 and can be ordered through the Internet at: http://www.national-academies.org/trb/bookstore Printed in the United States of America NCHRP REPORT 799 Project 20-89 ISSN 0077-5614 ISBN 978-0-309-30840-3 Library of Congress Control Number 2015931194 © 2015 National Academy of Sciences. All rights reserved. COPYRIGHT INFORMATION Authors herein are responsible for the authenticity of their materials and for obtaining written permissions from publishers or persons who own the copyright to any previously published or copyrighted material used herein. Cooperative Research Programs (CRP) grants permission to reproduce material in this publication for classroom and not-for-profit purposes. Permission is given with the understanding that none of the material will be used to imply TRB, AASHTO, FAA, FHWA, FMCSA, FTA, or Transit Development Corporation endorsement of a particular product, method, or practice. It is expected that those reproducing the material in this document for educational and not-for-profit uses will give appropriate acknowledgment of the source of any reprinted or reproduced material. For other uses of the material, request permission from CRP. NOTICE The project that is the subject of this report was a part of the National Cooperative Highway Research Program, conducted by the Transportation Research Board with the approval of the Governing Board of the National Research Council. The members of the technical panel selected to monitor this project and to review this report were chosen for their special competencies and with regard for appropriate balance. The report was reviewed by the technical panel and accepted for publication according to procedures established and overseen by the Transportation Research Board and approved by the Governing Board of the National Research Council. The opinions and conclusions expressed or implied in this report are those of the researchers who performed the research and are not necessarily those of the Transportation Research Board, the National Research Council, or the program sponsors. The Transportation Research Board of the National Academies, the National Research Council, and the sponsors of the National Cooperative Highway Research Program do not endorse products or manufacturers. Trade or manufacturers’ names appear herein solely because they are considered essential to the object of the report.

The National Academy of Sciences is a private, nonprofit, self-perpetuating society of distinguished scholars engaged in scientific and engineering research, dedicated to the furtherance of science and technology and to their use for the general welfare. Upon the authority of the charter granted to it by the Congress in 1863, the Academy has a mandate that requires it to advise the federal government on scientific and technical matters. Dr. Ralph J. Cicerone is president of the National Academy of Sciences. The National Academy of Engineering was established in 1964, under the charter of the National Academy of Sciences, as a parallel organization of outstanding engineers. It is autonomous in its administration and in the selection of its members, sharing with the National Academy of Sciences the responsibility for advising the federal government. The National Academy of Engineering also sponsors engineering programs aimed at meeting national needs, encourages education and research, and recognizes the superior achievements of engineers. Dr. C. D. Mote, Jr., is president of the National Academy of Engineering. The Institute of Medicine was established in 1970 by the National Academy of Sciences to secure the services of eminent members of appropriate professions in the examination of policy matters pertaining to the health of the public. The Institute acts under the responsibility given to the National Academy of Sciences by its congressional charter to be an adviser to the federal government and, upon its own initiative, to identify issues of medical care, research, and education. Dr. Victor J. Dzau is president of the Institute of Medicine. The National Research Council was organized by the National Academy of Sciences in 1916 to associate the broad community of science and technology with the Academy’s purposes of furthering knowledge and advising the federal government. Functioning in accordance with general policies determined by the Academy, the Council has become the principal operating agency of both the National Academy of Sciences and the National Academy of Engineering in providing services to the government, the public, and the scientific and engineering communities. The Council is administered jointly by both Academies and the Institute of Medicine. Dr. Ralph J. Cicerone and Dr. C. D. Mote, Jr., are chair and vice chair, respectively, of the National Research Council. The Transportation Research Board is one of six major divisions of the National Research Council. The mission of the Transporta- tion Research Board is to provide leadership in transportation innovation and progress through research and information exchange, conducted within a setting that is objective, interdisciplinary, and multimodal. The Board’s varied activities annually engage about 7,000 engineers, scientists, and other transportation researchers and practitioners from the public and private sectors and academia, all of whom contribute their expertise in the public interest. The program is supported by state transportation departments, federal agencies including the component administrations of the U.S. Department of Transportation, and other organizations and individu- als interested in the development of transportation. www.TRB.org www.national-academies.org

C O O P E R A T I V E R E S E A R C H P R O G R A M S AUTHOR ACKNOWLEDGMENTS The research reported herein was performed under NCHRP Project 20-89 by the Transportation Sector and Environmental Sector of Applied Research Associates, Inc. (ARA). Dr. Joe Bradley served as the Principal Investigator for this study. Dr. Bradley was supported in the research by ARA Research Engineers Dr. Jagannath Mallela, Mr. Kevin Chesnik, and Mr. Jay Bledsoe, and by Dr. Timothy Wyatt, an Associate Attorney with Conner Gwyn Schenck, PLLC. Ms. Robin Jones and Ms. Jennifer Mitchaner served as Technical Editors. The research team gratefully acknowledges the participation and cooperation of state departments of transportation (DOTs) and other organizations that responded to a survey as well as took part in phone interviews. CRP STAFF FOR NCHRP REPORT 799 Christopher W. Jenks, Director, Cooperative Research Programs Christopher Hedges, Manager, National Cooperative Highway Research Program Andrew C. Lemer, Senior Program Officer Sheila A. Moore, Program Assistant Eileen P. Delaney, Director of Publications Sharon Lamberton, Editor NCHRP PROJECT 20-89 PANEL Area Twenty: Special Projects Harold R. “Skip” Paul, Louisiana DOTD, Baton Rouge, LA (Chair) David L. Huft, South Dakota DOT, Pierre, SD Allison R. Hardt, Maryland State Highway Administration, Baltimore, MD Darrell L. Kuhn, Texas A&M University System, College Station, TX Joanne L. Lubart, Pennsylvania DOT, Harrisburg, PA Lynn Matis, Massachusetts DOT, Boston, MA Lawrence H. Orcutt, California DOT, Sacramento, CA Linda Preisen, Athey Creek Consultants, Maplewood, MN Joseph Conway, FHWA Liaison Jan Edwards, AASHTO Liaison Stephen A. Merrill, The National Academies Liaison James B. McDaniel, TRB Liaison

NCHRP Report 799: Management Guide to Intellectual Property for State Departments of Transportation provides information to assist state transportation agency staff to recognize the potential value of the agency’s intellectual assets and the agency’s responsibilities in respecting the intellectual property (IP) rights of others. The report presents guidance on how agencies can manage the copyrights, patents, and other IP that may be used or produced as a byproduct of the agency’s usual business activities. This guidance is intended to provide agency program staff with an introductory explanation of the nature of intellectual property, the legal framework for defining and protecting intellectual property, and basic principles for its management. The report includes examples and references for cases, tools, and other materials to enhance readers’ understanding of the activities likely to be associated with effectively managing an agency’s intellectual property. State departments of transportation (DOTs) are responsible for development and man- agement of facilities and services facilitating the safe and efficient movement of people and goods. In the course of fulfilling these responsibilities, DOT staff, consultants, and contrac- tors may produce novel designs, business procedures, products, software, and methods; these intellectual assets have particular value to the agency and possibly to others as well. For example, a logo or motto may represent the agency in the public’s mind; its misuse might damage the agency’s credibility. Agency staff may develop a computer software application that solves a problem and significantly enhances some aspect of the agency’s performance; other agencies and private-sector contractors might find the software useful as well. In such instances, these intellectual assets may warrant active management and possibly legal protection as “intellectual property.” IP refers to a broad category of intangible rights protecting valuable products of the human intellect and represents a complex and—to the non-practitioner, at least—arcane area of legal practice. Many DOT staff members are unfamiliar with the concepts of IP, the requirements governing IP rights, and the benefits that can be derived from effectively managing those rights. Their agencies may have established neither policies nor procedures for IP management and no mechanisms even to identify their potentially valuable IP. The objective of this research was to develop a practical guide for state DOT staff on IP management. The Guide is intended to provide practical assistance, particularly to those personnel who may produce or be responsible for management of intellectual assets and who lack formal training in the intricacies of IP protection. The research was conducted by a team led by Applied Research Associates, Inc., of Champaign, IL. The research team conducted an extensive review of literature on U.S. and international practices relating to IP and its management in the areas of transportation and F O R E W O R D By Andrew C. Lemer Staff Officer Transportation Research Board

transportation research. The team also examined current practices of U.S. and international transportation agencies, particularly regarding IP identification, protection, and commer- cialization under applicable state and federal laws. The team undertook to characterize the key IP management issues DOTs face and principal strategies for addressing these issues. IP management practices in other areas of technology and sciences were also considered for their potential value in dealing with issues DOTs may typically face. The primary product of this research is this IP Management Guide. It is an introduction to a complex subject, meant to assist DOT staff to recognize the potential value of the agen- cy’s intellectual assets and when managing these assets as IP may yield greater benefits to the DOT and its stakeholders. The Guide also considers the DOT’s responsibilities regarding respect for the IP of others that may be used by the DOT or its contractors. In addition to the Guide, the research team produced a summary report of the research and a set of presenta- tion slides that a DOT’s research or legal staff might use to present IP management concepts to others. These latter two products are available for download from the NCHRP project web page by going to www.trb.org and searching “NCHRP Project 20-89.” A link to the presentation slides is provided in Appendix I of this Guide. Also included in the Guide, Appendix H is a suggested work plan an agency might use for undertaking staff training in IP management.

1 Chapter 1 Introduction 1 1.1 Background 2 1.1.1 Why Should State DOTs Manage IP? 3 1.1.2 Definition and Forms of IP 3 1.1.3 IP Ownership Rights 3 1.1.4 What Is IP Management? 5 1.2 Framework for IP Management 6 1.2.1 The Legal Dimension 7 1.2.2 The Technical Dimension 7 1.2.3 The Economic Dimension 7 1.2.4 The Organizational Dimension 7 1.3 Research Objective and Scope 8 1.4 Application of IP Management in the State DOT 9 1.5 Organization of the Guide 10 Chapter 2 Overview of the IP Management Process 10 2.1 Overview 12 2.2 State DOT IP Management: Current Guidance 14 2.3 Responsibility for IP Oversight 14 2.4 Disclosure 14 2.5 Screening and Reviewing 14 2.6 Deciding on IP Protection 14 2.7 Determining the Appropriate Forms of IP Protection and Registration 15 2.8 IP Management Options 15 2.9 Defending IP Rights 15 2.10 Managing Revenue Earned from IP 15 2.11 Measuring the Effectiveness of IP Management Efforts 16 2.12 IP Audit 17 Chapter 3 Responsibility for IP Oversight 17 3.1 Organizational Structure and Responsibility 18 3.2 Operational Cost 18 3.3 Training, Education, and Outreach 19 3.4 Outsourcing Alternatives for IP Management 22 Chapter 4 Disclosure, Screening, and Reviewing 22 4.1 Disclosure Forms 22 4.2 Disclosure Review, Screening, and Analysis 23 4.3 Disposition Decisions 23 4.3.1 Registering IP 24 4.3.2 Release to the Public Domain 25 4.3.3 Release to the Employee-Inventor or Contractor C O N T E N T S

26 Chapter 5 Forms of IP Protection and Registration 26 5.1 IP Protection Considerations 26 5.1.1 Exclude Others from Use 26 5.1.2 Control Future Use 27 5.1.3 Ensure the IP Remains in the Public Domain 27 5.1.4 Avoid Potential Future License Fees 27 5.1.5 Control the Commercialization Process 27 5.1.6 Establish a Revenue Stream 28 5.2 Patents 29 5.2.1 What Is a Patent? 29 5.2.2 Acquiring a Patent 31 5.2.3 Special Cases for Patents 31 5.2.4 Infringement and Protection of Patent Rights 32 5.3 The America Invents Act: Significant Change to the Patent System 34 5.4 Copyrights 34 5.4.1 What Is a Copyright? 37 5.4.2 Acquiring a Copyright 37 5.4.3 Special Cases in Copyrights 40 5.4.4 Infringement and Protection of Copyright 40 5.4.5 Open-Source Software and Berkeley Software Distribution (BSD) Licenses 41 5.5 Trademark 41 5.5.1 What Is a Trademark? 44 5.5.2 Acquiring a Trademark 46 5.5.3 Infringement and Protection of Trademarks 46 5.6 Trade Secrets 46 5.6.1 What Is a Trade Secret? 47 5.6.2 Acquiring and Protecting a Trade Secret 48 5.6.3 Crafting a Trade Secret Policy 49 5.7 Summary: Types of IP 50 Chapter 6 Understanding IP Management and Options 50 6.1 State DOT Employees 50 6.1.1 What Defines the IP Ownership Interests? 52 6.1.2 Considerations for the State DOT 54 6.1.3 Potential Approaches 56 6.2 State DOT Contractors 56 6.2.1 Types of Contractors 58 6.2.2 What Defines the IP Ownership Interests? 61 6.2.3 Considerations for the State DOT 63 6.2.4 Potential Approaches 64 6.3 Third-Party Owners 66 6.3.1 Benefits and Considerations for State DOTs Using Third-Party IP 70 6.3.2 Potential Approaches to IP Protection 73 6.3.3 Potential Approaches to IP Sharing 74 6.4 Dedication to the Public Domain 74 6.4.1 What Is the Public Domain? 75 6.4.2 Public Domain Decisions 75 6.4.3 How to Dedicate IP to the Public Domain 77 6.5 Licensing 77 6.5.1 Licensing at the State DOT 80 6.5.2 Reasons the State DOT Might Take a License

81 Chapter 7 Managing Revenue Earned from IP 81 7.1 IP Revenue Management and Revenue Sharing 82 7.2 Future Investments 85 Chapter 8 Measuring the Effectiveness of IP Management Efforts 85 8.1 Monitoring IP Management Progress 87 Chapter 9 Case Studies 87 9.1 Mechanically Stabilized Earth Wall 88 9.1.1 Case Analysis: MSE Wall 88 9.2 Paver Placed Surface Treatment 90 9.2.1 Case Analysis: PPST 91 9.3 Guardrail End Terminal 92 9.3.1 Case Analysis: Guardrail End Terminal 93 9.4 Mural on Highway Overpass 94 9.4.1 Case Analysis: Mural on Highway Overpass 95 Chapter 10 IP Management Application Examples 95 10.1 The Work Zone Alert Water Curtain: Patent 97 10.2 Now That’s How to Drive: Trademark 97 10.3 Sharing the Road with All Stakeholders: Copyright 98 10.4 A Method for Predicting Icy Roadway Conditions: Trade Secret 100 Notes 107 Sources 110 Glossary 114 Appendix A Patent Search and Information Resources 114 Types of Patent Applications 116 Internet Resources 117 Appendix B Copyright Search Resources 119 Appendix C Sample Invention Disclosure Document 122 Appendix D Invention Disclosure from the Virginia Department of Transportation 128 Appendix E Non-Disclosure Agreement (NDA) from the New York State Department of Transportation 130 Appendix F Private Industry: Non-Disclosure Agreement (NDA) from Applied Research Associates (ARA) 133 Appendix G Intellectual Property Management Checklist 135 Appendix H Training Work Plan 139 Appendix I PowerPoint Summary of NCHRP Project 20-89 Note: Photographs, figures, and tables in this report may have been converted from color to grayscale for printing. The electronic version of the report (posted on the web at www.trb.org) retains the color versions.