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

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110 America Invents Act (AIA) The Leahy-Smith America Invents Act (PL 112-29) represents the most significant change to the U.S. patent system since 1952. One of the most substantial changes is that the U.S. system switches from first-to-invent to first-inventor-to-file. Under the AIA, the persons filing must still demonstrate that they are true inventors of the invention. Assignment agreements Agreements that transfer the rights vested in the intellectual property (IP). The result is that the assignee is now vested with rights of ownership to the IP. Bayh-Dole Act The Bayh-Dole Act (PL 96-517, Patent and Trademark Act Amendments of 1980) changed the ownership of inventions created using federal funding. Prior to passage of the Bayh- Dole Act, inventions made under federal grants and contracts were assigned to the federal government. With the passage of the Bayh-Dole Act and additional amendments, universities, small businesses, not-for-profit entities, and for-profit entities working under federal funding can claim rights to an invention. Berne Convention Treaty An agreement among the countries that have adopted the Berne Convention provides automatic protection for works first published in other member countries and for unpub- lished works whose authors are citizens of or residents in such other countries. http://www.wipo.int/treaties/en/text.jsp?file_ id=283698. Commercialization A series of steps and actions taken to introduce a new product to market and/or to take a technology or product from the laboratory to the market. Common-law property rights Certain property rights given to individuals without the necessity of state or federal registration. Conflict of interest A situation in which financial or nonfinancial considerations may compromise or appear to compromise a person’s judgment. Contract A legally binding agreement between two or more parties which obligates each party to certain requirements and activi- ties covered in the agreement. Glossary

Glossary 111 Cooperative research and development agreement (CRADA) A research and development agreement between the govern- ment and a private party. There is no exchange of money, but other considerations are common, such as use of data, laboratory space, and so forth. Copyright A form of IP protection that covers the expression of concepts. These forms of expression may include literary works, musicals, motion pictures, computer programs, and so forth. Copyright protection does not extend to the concept itself—the under- lying idea, method, or process embodied by the protected expression is not itself subject to copyright protection. Creative Commons Nonprofit organization that releases “Creative Commons” copyright licenses. This platform allows an author to reserve particular rights to his or her work. Typically, a copyright will have all rights reserved, or perhaps all rights dedicated to the public domain. Defensive publishing Disclosing and enabling description of a technology or invention to the public in order to establish the technology or invention as prior art in the public domain. Disclosure form Formal written description of potential IP. This document typically is submitted to the responsible party within an orga- nization. It should serve as a first alert of something that may be novel, useful, and/or creative. Enabling disclosure or description A description of an invention that provides sufficient detail to enable a person “ordinarily skilled in the art” to replicate the invention. Fair use Provides a legal mechanism for the unauthorized use of a copyrighted work. Fair use should never be assumed. It is recommended that the owner of the copyright be contacted and authorization be obtained prior to any use of copyrighted material. Infringement Refers to the unauthorized use of IP rights. Intellectual property (IP) Something created by human intellect that has some value that is eligible for protection under patent, copyright, trade secret, or trademark. Inventor The individual(s) who contributed to the conception of an invention. Conception involves the mental exercise in the creation of an invention. The act of reducing an invention to practice is not sufficient to claim ownership. IP aggregators Entities that purchase portfolios of IP, in some cases around particular subject matter. The typical intent is to leverage the portfolio via licensing agreements with several other organizations. IP exchanges A platform somewhat similar to a stock exchange by which clients can invest in various IP assets for use within their organizations. An IP exchange better shares the risk between a licensee and licensor.

112 Management Guide to Intellectual Property for State Departments of Transportation IP management Strategic and proactive approaches to maximize an investment in IP. License A contractual agreement that authorizes the use of the IP rights of protected IP. The owner of the IP rights may grant these rights for either financial or nonfinancial compensation. A license is typically nonexclusive (meaning that the IP owner can grant similar usage rights to others) but the contracting parties are generally free to negotiate an exclusive license. March-in rights Granted rights to issue new, or revoke existing, licenses to IP. This is usually applied to cases where the commercial devel- opment of IP is lagging within the current operations of a licensee. Material transfer agreement A contractual agreement that governs and determines the terms in the transfer of research materials between organizations. Noncompete agreement An agreement forbidding former employees from direct competition or sharing of confidential information. These agreements normally have a time limit and are scrutinized if the requirements have an impact on the ability of an individual to secure employment in a field in which they have skills and experience. Nondisclosure agreement (NDA) A confidential agreement restricting the sharing of confidential information between parties. The NDA may also be known as a confidentiality agreement (CA). Nonpracticing entities An entity holding the rights to IP but that is not practicing the IP. Patent An IP right granted by some national governments, includ- ing that of the United States, to exclude others from making, using, offering for sale, or selling the invention throughout the United States, or importing the invention into the United States for a limited time. Patent Cooperative Treaty (PCT) A multinational agreement that assists applicants seeking international patent protection for their inventions. By filing one international patent application under the PCT, appli- cants can simultaneously seek protection for an invention in 148 countries. Prior art Any available material prior to the current IP for which novelty and newness of the current creation is compared. Reduced to practice The IP has been demonstrated in some tangible form of a product or services offering. Royalty A payment or consideration received by the IP owner in exchange for rights to use the creation. Shop rights An implied right of a firm to use a patented invention that was invented by an employee in the scope of their employment using the resources of the firm.

Glossary 113 Swearing behind Historically, a way of countering the risk of having a patent application blocked by public disclosures during the 1-year “grace period” immediately preceding the application. Inven- tors could file a declaration showing that they had invented the subject matter before any such disclosures. Having filed such a declaration, it would be presumed that the applicants’ invention predated any recent disclosures. Also called swearing behind the reference. Technology assessment A thorough business case analysis for a technology or inven- tion. In this analysis, the analyst researches applicable markets, competing technologies, and the IP profile, financial analysis, and go-to-market strategies for a given technology or invention. Trademark A form of protection intended to be used to identify and distin- guish the goods/services of competing providers. The primary goal is to indicate the source of the goods or services. Trade secret Information in which the value is derived from the secrecy of the information. Trade secrets may cover many forms of creativity or ingenuity. Work made for hire (work for hire) Copyrightable works that are owned by the employer and not the employee. These include works prepared by an employee within the scope of her or his employment or works specially ordered or commissioned for use, such as a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a supplementary work, a compilation, or an instructional text.