Management Guide to Intellectual Property for State Departments of Transportation (2015) / Chapter Skim
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50 For the state DOT, as with most organizations, understanding the impact of IP management decisions on the key state DOT stakeholders is very important. This chapter highlights some of the key factors and stakeholders involved in IP management decisions for the state DOT.
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Understanding IP Management and Options 51 common law doctrines exist to protect the rights of employers in IP generated by employees in the course of their employment. • Inventions.
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52 Management Guide to Intellectual Property for State Departments of Transportation of the state DOT to share revenue with the employee (103)
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Understanding IP Management and Options 53 approach, preferably enforceable by law, reduces uncertainty and disputes over IP rights, but can also mean less flexibility for the state DOT to make decisions on a case-by-case basis. A recommended approach for a state DOT would provide the flexibility for the DOT to decide to take title, otherwise assist the employee in commercialization, or simply take a hands-off approach, depending on the circumstances and according to documented criteria.
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54 Management Guide to Intellectual Property for State Departments of Transportation would tend to be enhanced dissemination for the state DOT and enhanced credentials for the employee-author. Because of public records and open government laws, the development of true trade secrets by employees in the course of their state DOT employment is rare.
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Understanding IP Management and Options 55 obtained by agreement. Legal counsel can also determine whether state courts have imposed any constraints on IP assignment agreements in other contexts (e.g., private employment)
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56 Management Guide to Intellectual Property for State Departments of Transportation 6.1.3.2 Employee Revenue Sharing Where the state DOT takes title to IP developed by its employee, the employee generally should receive something in return. As discussed in Section 6.1.2, this helps ensure that the assignment is enforceable and encourages employees to disclose inventions or creations.
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Understanding IP Management and Options 57 6.2.1.1 Service Contracts State DOTs regularly contract for standard services (e.g., janitorial services) that do not lend themselves to IP generation.
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58 Management Guide to Intellectual Property for State Departments of Transportation of the design, not the utilitarian aspects of the architectural work. However, with passage of the Architectural Work Copyright Protection Act in 1990, a copyright in an architectural work can prevent others from using a copyrighted design to construct a similar structure (121)
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Understanding IP Management and Options 59 rights were formally extended to all federal contractors, regardless of size or for-profit status (126)
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60 Management Guide to Intellectual Property for State Departments of Transportation contractors with state DOT funding, those that do are likely to provide that any IP developed through state DOT contracts becomes state property, not the property of the contractor (135)
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Understanding IP Management and Options 61 technology of its contractor, which cannot realistically be practiced without a license to also use the pre-existing technology. State DOTs are advised to proactively consider whether they want to require their contractors to license pre-existing technology to the state DOT, at least when used in conjunction with the proposed improvement being funded by the state DOT.
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62 Management Guide to Intellectual Property for State Departments of Transportation 6.2.3.2 Is There a Need to Control Future Use of the IP? The state DOT's primary concern in crafting an IP policy should be to maximize value to the taxpaying public.
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Understanding IP Management and Options 63 The taxpaying public will often expect the state DOT to retain ownership to IP that it funds, or even to devote that IP to the public domain. However, the public at large can benefit from IP developed by state DOT contractors even if public or other private actors have to pay for future non-DOT uses of the IP.
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64 Management Guide to Intellectual Property for State Departments of Transportation and technology transfer objectives of Bayh-Dole. In that case, federal agencies are authorized by the FAR to use a different contract clause that confers title to the government, while providing a mechanism for the contractor to request title upon presenting the government a commercialization plan in writing (147)
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Understanding IP Management and Options 65 Figure 9. Model contract language for patent ownership by funding agency (based on FAR clause)
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66 Management Guide to Intellectual Property for State Departments of Transportation 6.3.1 Benefits and Considerations for State DOTs Using Third-Party IP In a number of scenarios, state DOTs may consider acquiring the right to use third-party IP. State DOT employees or managers may simply become aware of commercial or proprietary products or services for which the state DOT might have a general use, without devoting the IP to any specific application.
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Understanding IP Management and Options 67 the alternatives, however, state DOTs also need to consider the long-term, life-cycle costs of contracting for third-party proprietary IP. This analysis will account for the scope of the license being acquired.
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68 Management Guide to Intellectual Property for State Departments of Transportation license from the rights-holder allowing the IP to be used on behalf of the state DOT, the DOT could enter into a competitive bidding process with multiple contractors (possibly including the licensor) to provide the goods or services covered by the license.
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Understanding IP Management and Options 69 or in part with government funding, it is worth determining the scope of any licenses granted to the federal and/or state governments and agencies under the funding agreement. 6.3.1.4.2 Does Fair Use Apply?
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70 Management Guide to Intellectual Property for State Departments of Transportation occurs with the express knowledge and direction of the state DOT. Furthermore, when state DOTs are involved in the development of IP, the license taken by the DOT may or may not include the right to have the IP used on behalf of the DOT.
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Understanding IP Management and Options 71 requiring the state DOT to submit a request to IP management before contracting to acquire new rights in IP. Furthermore, IP management would need to have contract review authority and to actually review most contracts of the state DOT, both to ensure that the state DOT is not paying unnecessary premiums or royalties for IP already available to the state and to identify new IP interests that may arise from any given contract.
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72 Management Guide to Intellectual Property for State Departments of Transportation In addition to statutory prohibitions, however, state DOTs may require employees and contractors who are given access to third-party proprietary IP to sign nondisclosure agreements. Although such agreements may appear superfluous in light of applicable statutes, they have the advantage of putting the employee or contractor on notice that they are being given access to proprietary third-party IP for state DOT purposes only, and encouraging the employees or contractors to handle such third-party IP with appropriate care.
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Understanding IP Management and Options 73 The model nondisclosure agreement language shown in Figure 11 has been adapted from various nondisclosure agreements used by federal government agencies: The actual language of any nondisclosure agreement should be developed in consultation with legal counsel, to ensure that it is enforceable under state law and that it is consistent with applicable statutory nondisclosure requirements applicable to state DOT employees and contractors. 6.3.3 Potential Approaches to IP Sharing A state DOT research contract may provide that a paid-up license in any resulting IP will be retained not just by the state DOT funding the work, but by all state DOTs nationwide.
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74 Management Guide to Intellectual Property for State Departments of Transportation receive a paid-up, nontransferable license to use any IP developed under the contract. For IP to which a state DOT has obtained only a nontransferable license, rather than title, the state DOT generally will be unable to make that license part of the pooling agreement (because doing so would impact the rights of the previous R&D contractor)
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Understanding IP Management and Options 75 6.4.2 Public Domain Decisions When deciding whether to dedicate protectable IP assets to the public domain, it is recommended that the state DOT consider what will best achieve the public good. Potential factors to consider include the following: • In some cases, delivering the public good can require public ownership (e.g., public parks, public museums)
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76 Management Guide to Intellectual Property for State Departments of Transportation a registered copyright becomes dedicated to the public domain on expiration of the statutory copyright term (no further publication being necessary, given that the work was previously made public by registering it with the Copyright Office)
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Understanding IP Management and Options 77 law permits, the state DOT may grant others a royalty-free license to duplicate and distribute the copyright-protected work (similar to the licenses available via Creative Commons)
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78 Management Guide to Intellectual Property for State Departments of Transportation to use IP is similar to the concept of an easement over real property -- an interest short of title that nevertheless allows the state DOT limited use of the property for specific purposes or for a specific timeframe. When IP is registered with the federal government, it is typically with an eye toward commercially exploiting that property.
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Understanding IP Management and Options 79 between a state DOT and third-party IP licensors. There will be two primary limitations on the scope of the license: • First, the license will be limited by the title holder's property interest.
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80 Management Guide to Intellectual Property for State Departments of Transportation 6.5.2 Reasons the State DOT Might Take a License A license is a more limited option than outright IP ownership. Generally speaking, a licensee does not have the right to exclude others from exercising the IP.
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