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

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85 8.1 Monitoring IP Management Progress It is important to monitor and audit the various types of agreements (e.g., CRADAs) a state DOT may have in place, as well as any licensing compliance. (For more information, see the dis- cussion of IP audits in Chapter 2.) It is also important to measure the success of the state DOT’s IP management program. Among other things, these assessments may provide a trigger to initiate march-in rights, if applicable. The guidance provided in this chapter borrows from the model used by the White House Office of Management to assess the success of a policy, adapting it for use in IP management (178). The model considers four key metrics: inputs, outputs, outcomes, and impacts. The discussion highlights how these concepts may be applied to IP management: • Inputs: Numbers of IP disclosures, patent applications, copyright applications, trademark applications, and registrations. The applications and registered IP may include IP from both employee-inventors who were given the option to pursue IP protection for a technology and contractors/consultants who have filed for IP protection. • Outputs: Numbers of licenses, technology transfer agreements, licensing income, and royalty- free agreements, or even potential lives saved due to a state DOT innovation. • Outcomes: Numbers of new products (derivatives) in the market using protected IP, including protected technology. The products may be based on technology developed directly from the state DOT, or may be based on technology that was licensed and further developed by a contractor or employee who subsequently commercialized a product. An additional outcome may be the aggregate number of states, counties, and cities that have implemented or deployed the IP. Outcomes also may encompass the number of publications, number of new research projects funded by revenue from IP management, and new knowledge creation. • Impacts: New jobs created, payroll from jobs, and regional economic development. These types of assessments have been undertaken by organizations such as the U.S. Depart- ment of Defense (DoD) and the U.S. Navy to better understand the nationwide economic impact of their technology transfer and IP management efforts. In a study conducted by DoD and the Navy, the research data suggests that the economic impact of DoD technology transfer and IP management over the period 2000–2009 was $729 million, and that 4,290 new jobs were created. The impact of the Navy’s technology transfer and IP management over the period 2005–2009 was $545 million, and 2,630 new jobs were created (179). Having an effective way to measure the outcomes of a state DOT’s IP management program is important. Traditionally, many measures of the success in IP management programs have been based on licensing revenue and new product development has been the key benchmark. For the state DOT, the value that is created by its IP assets may be linked far more to social benefits, such IP management helps state DOTs: • Maintain access to results derived from funded projects or employee-inventors/ creators. • Protect the interests and IP rights of others. • Shield state DOT contractors from IP infringement claims by other contractors or third-party patent owners. • Identify contributions to the field by DOTs, including contractors and employee- inventors/creators. • Secure monetary compensation for use of state DOT–owned IP. • Encourage investment in technology devel- opment and commer- cialization. • Avoid becoming “captive” to incumbent contractors with pro- prietary technology. • Provide a mechanism for outbound licensing of rights to IP. C H A P T E R 8 Measuring the Effectiveness of IP Management Efforts

86 Management Guide to Intellectual Property for State Departments of Transportation as the estimated number of accidents circumvented or prevented and/or the number of lives saved by state DOT innovations. Two such innovations are truck-mounted attenuators and rumble strips. These technologies have been successfully researched, developed, and deployed to the benefit of many motorists and transportation employees (180). Furthermore, these technologies have been managed with an intent to accelerate their adoption and implementation. Had these technologies been managed with a defensive and protection-based IP strategy, their adoption and use could have been slowed and/or hampered, which in turn would have limited the benefits of these technologies. IP management has played a significant role in the exploitation of these technologies. Although most monitoring efforts may focus on numerical factors to gage success (as in the case of the U.S. Navy and the DoD reviews), it is important that social metrics also be considered to ensure a balanced appraisal of success. The specific goals for measuring and assessing the impact of IP management will vary from one state DOT to another, but the aforementioned metrics provide the flexibility for multiple objectives. Goals • Ensure that state DOTs have continued access to innovations devel- oped 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). • Reduce constraints imposed by third-party proprietary technology. • Shield state DOT contractors from IP infringement claims. • Encourage efficient transference of new inventions/innovations to practice. • Support economic development (and perhaps spur economic growth) in the state/ nation. • Maximize the return on taxpayer dollars.