Facilitate the participation of private sector technology companies in the deployment of ITS by using creative approaches to address the assignment of intellectual property rights.
Arizona and Washington’s experiences resolving intellectual property rights issues in the development and use of information technologies in ITS applications.
Made Public Date
09/16/2005

27

Phoenix
Arizona
United States

16

Seattle
Washington
United States
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Identifier
2005-00101

What's Yours, Mine, and Ours: Overcoming Intellectual Property Rights Issues: Facilitating Private Sector Participation and Expediting Performance.

Background

Since the beginning of the ITS Program, the U.S. DOT has encouraged the participation of the private sector. However, federal intellectual property rules governing ownership and access to intellectual property have tended to discourage the private sector from investing in U.S. DOT-supported activities. To address this problem, the Transportation Equity Act for the 21st Century included new research and technology initiatives. These initiatives gave U.S. DOT operating agencies greater flexibility to negotiate terms and conditions for private sector participation, such as those involving ownership and access to intellectual property, than was available under other research and capital programs. Agencies have found that they can reduce the impact that intellectual property rights issues generally have on project deployment schedules by taking creative approaches to resolving intellectual property rights issues. For example, the solicitation of Federal Government policy, development of licensing agreements, creation of an intellectual property manual, and the creation of more flexible programs illustrate that intellectual property rights issues do not represent impenetrable barriers to ITS tests and deployments.

Lessons Learned

Address intellectual property rights issues and questions of ownership of software and technology developed or enhanced during the course of the project through creative approaches. For example:

 

  • Licensing Agreements: Develop licensing agreements that clearly assign the intended intellectual property rights to hardware and software technologies. For example, representatives from the AZTech model deployment developed two licensing agreements: one for preexisting technologies and privately funded developments and another for hardware and software developed during the course of the Model Deployment Initiative using public funds. The license for preexisting technologies and developments allowed public sector participants to make limited use of preexisting products. The private sector firm grants a “non-transferable, non-exclusive five-year license to use the software, data and/or documentation...solely for use on the AZTech Model Deployment Initiative.” The license for products developed during the course of the Model Deployment Initiative grants the public sector “royalty-free, non-exclusive, and irrevocable license to reproduce, publish, or otherwise use…the federal government funded software, data, and/or documentation…solely for official federal government purposes.”

 

  • Intellectual Property Manual: Develop formal procedures for addressing intellectual property issues. For example, TxDOT’s management established an Intellectual Property Committee at its Austin Headquarters. This committee evaluated TxDOT’s needs, made recommendations, and issued guidance to clarify TxDOT’s policy on the ownership and use of intellectual property developed and used on projects funded by TxDOT. This guidance provides agency standards regarding TxDOT ownership of intellectual property that is widely accessible to employees in an electronic format. Further, the standards are incorporated into requests for proposals or other agency contracting processes.
  • Federal Government Policy: Use FHWA intellectual property rights policies to negotiate terms and conditions with private sector IT providers. For example, in order to resolve intellectual property rights concerns between the public and private sector participants in the AZTech Model Deployment Initiative, the parties requested that the Federal Highway Administration (FHWA) clarify the Federal Government’s policy on proprietary information. As explained in a letter from FHWA’s Associate Chief Counsel for General Law (included in the report), the FHWA’s use of the copyrightable or patentable products developed by the private sector is limited to FHWA projects with non-commercial purposes. In short, whatever the private sector representatives bring to the project remains their property. Software brought to the project and enhanced throughout the course of the project is federal property, although the private sector representatives retain titles to the patents for these products.

Representatives from the AZTech Model Deployment Initiative indicated that the letter from the FHWA counsel was essential to resolving intellectual property rights issues relative to software developed during the course of the project. Lewis said, “The letter from FHWA counsel clarified the policy on the FHWA’s use of enhanced technologies developed with federal funds. Included in all contracts between the public and private sectors, the letter resolved concerns of both sectors.”

Resolve intellectual property rights questions early to increase efficiency: In both the AZTech and TransGuide Model Deployment Initiatives, questions of intellectual property extended project negotiations. Only when these questions were answered were the project participants able to proceed with the business of deploying their systems. Resolving these issues allowed project participants to spend time on technical, rather than policy and procedural issues.

What's Yours, Mine, and Ours: Overcoming Intellectual Property Rights Issues: Facilitating Private Sector Participation and Expediting Performance.

What's Yours, Mine, and Ours: Overcoming Intellectual Property Rights Issues: Facilitating Private Sector Participation and Expediting Performance.
Publication Sort Date
08/01/2000
Author
Allan DeBlasio (Volpe Center)
Publisher
ITS JPO

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