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

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22 4.1 Disclosure Forms A crucial step in managing IP is getting an idea of what valuable IP the state DOT may possess. A state DOT may have a treasure trove of potentially protectable assets (e.g., inventions or creative works). State DOTs need to identify the potential IP assets that they may already own, to which they may need to acquire or enforce their rights. Examples of potential IP assets are specific technologies, training materials, media productions, reports, or databases. A best practice observed in many organizations that manage IP is the development of a document, typically called a disclosure form, which inventor(s)/creator(s) can submit to the IP management office. The disclosure form should provide a fairly detailed overview of the invention or creative work. A disclosure form is an effective document for eliciting and docu- menting potential IP arising from state DOT–funded projects and activities. Disclosure forms are submitted for new inventions, creative works, logos, and other assets. Appendix C to this Guide shows a sample disclosure form prepared by AASHTO. The form should be a standalone form that the IP management staff can use to assess the potentially protectable work that has been submitted. 4.2 Disclosure Review, Screening, and Analysis After receiving a disclosure form submission, one best practice observed by many university and government laboratory IP management offices is to arrange a meeting with the inventor(s)/ creators(s) to discuss the content of the form. This meeting is helpful in generating more details that can support the evaluations made by the IP office staff as they decide how to manage a particular IP asset. Questions to be addressed during the disclosure review process include: • What is the technology, invention, or creative work? How can it be described (if applicable)? • What does it do? What are the key features and benefits? • Are there any national security concerns? • At what stage of development is the technology, invention, or creative work? What is its commercialization readiness? Its manufacturability? • Could the technology, invention, or creative work described in the disclosure be protected by IP? • What is the funding source (state-only, federal-only, or mixed funding)? • What is the target industry or market? What is the market size? • What are the appropriate criteria for identifying, selecting, and prioritizing the technology, invention, or creative work for IP protection and technology transfer, and how best can resources be allocated? C H A P T E R 4 Disclosure, Screening, and Reviewing

Disclosure, Screening, and Reviewing 23 The disclosure review process should have a time limit. Some organizations report that they take 6 to 8 weeks per disclosure (26). The disclosure review timeline will be affected by the number of resources available for review, by policies that may prioritize specific categories of fields of application for a specific technology or concept described in the disclosure, and by impending deadlines (e.g., if a patent application needs to be filed within a very short timeframe). For example, policy may direct that state DOT logos that could be trademarked have priority over, and are therefore reviewed before, copyrightable content—or vice versa. In another scenario, multiple researchers in private and public organizations may be working on similar technologies, so it may be important to be the first inventor to file. The review timeline also will be impacted by the number of disclosures received by the IP management office and the amount of resources dedicated to reviewing the disclosures. The outcome of the review process should produce next-step action items. Some of the content commonly found in a review report includes: • Description of the problem and/or challenge being addressed. • Description of the IP. • Key features and benefits of the IP. • Potential applications. • IP disposition decisions (e.g., dedicate to public domain, pursue IP protection, proactive tech- nology transfer, licensing). The review report should provide enough information to support the IP management group and state DOT in making the disposition decisions about the IP. 4.3 Disposition Decisions After completing the disclosure review and screening, options for the disposition of the IP are considered, including whether to: • Register or apply for registration of the IP (if applicable). • Assume common law rights (where appropriate). • Allow the employee or contractor who submitted the disclosure to move forward with the invention, concept, or creative work. • Dedicate the IP asset to the public domain. Each option has risks and benefits. 4.3.1 Registering IP Although certain common-law IP rights may arise at invention (e.g., trade secrets), authorship and fixation (e.g., copyrights), or use in commerce (e.g., trademarks), depending on the form of IP, an IP owner typically must register patents, copyrights, and trademarks with the federal government in order to obtain the full scope of IP ownership rights. For example, with regard to patents, copyrights, or trademarks, formal registration is typically required for an IP owner to take legal action against an entity making unauthorized use of the IP. Trade secrets provide a unique form of IP protection in which the value is derived from the secrecy of information. A state DOT will need to demonstrate that procedures are in place to protect these secrets and that the state DOT is proactively managing its trade secrets. Table 5 shows the categories of potential IP that may arise from DOT-funded activities. It’s important to note that a state DOT’s ability to register IP or to protect trade secrets will be limited by the legal framework (e.g., state statutes and regulations) within which the

24 Management Guide to Intellectual Property for State Departments of Transportation state DOT must operate. Chapter 6 addresses state-specific legal issues with respect to these forms of IP. An important consideration in developing an IP management strategy for a state DOT will be what resources are available to register IP. If a state DOT should choose not to register or to proactively manage its IP, or if the state DOT’s ability to register or manage its IP is limited by resources or by state law, there is the risk of losing control over how the IP may be used in the future. One state DOT representative reported that they have encountered at least two situations of a business misappropriating the state DOT’s IP assets. In at least one interview, the state DOT had not registered its IP and attempted to take legal action, only to be ruled against. The DOT had to subsequently attempt to reclaim the rights and then pursue litigation at another time. Unfortunately, failure to register the IP tied the hands of the state DOT in regard to its options to bring enforcement against the party that was misappropriating the IP. 4.3.2 Release to the Public Domain Most state DOTs have commonly dedicated to the public the outcomes of state DOT–funded activities (e.g., research, projects). The rationale behind this approach is that public funds are used for these state DOT projects, so rights to the outcomes (i.e., the IP) should be given back to the public (27). If a goal for the state DOT is to utilize and manage its IP in the best interest of the public, however, another way to approach this goal is to maximize value—which, in some cases, may require taking ownership of some outcomes and proactively managing them as state DOT–owned IP. Potential Output of R&D and Improvement Projects De�inition Applicable IP Protection Patentable inventions Discoveries and inventionsthat enable new usefulapplications, machines, devices, processes, methods, etc. Patent Trade secret Research tools Inventions that are expected to facilitate subsequentresearch. If the owner of the research tool seeks to control dissemination and use of the tool, model agreements can bestructured. Patent Trade secret Computer programs Computer programs for a variety of applications. For programs containingalgorithms for specific output or attached to a machine, a patent may be possible. Patent Trade secretCopyright Databases Compilation of data and potential new ways of presenting the data in charts,graphs, maps, etc. Trade secretCopyright Research articles Publishable scienti�ic articles. Copyright Business processes and methodologies Ways of doing business, new business models, monetization of assets, real-time pricing models. Patent Trade secret Table 5. Applicable IP protection and categories (adapted from the California Council of Science and Technology).

Disclosure, Screening, and Reviewing 25 4.3.3 Release to the Employee-Inventor or Contractor For some projects, or in the course of their day-to-day work, an employee or contractor for the state DOT may create something that could be protected as IP. After screening and reviewing a disclosure form submitted by the employee or contractor, the state DOT may decide that the details of the technology or creative work discussed in the disclosure are not of interest to the state DOT. The state DOT’s IP management policies should include an option that allows the employee or the contractor to proceed with pursuing IP protection and commercializing the invention or creative work if they desire to move forward separately from the state DOT. Governance should be in place to resolve any conflicts of interest and provide royalty-free use for the state DOT if needed.