There is a continuing concern in the private sector that state or federal laws will require firms participating in public-private ITS partnerships to surrender valuable rights in intellectual property (computer programs, patentable inventions, proprietary technical data, etc.) developed with public funds. On the other hand, the public sector strives to give the public the "full benefit" of public spending by acquiring at least the right to use such intellectual property for "government purposes." Government officials also cite a generalized concern about creating a monopoly for certain technologies. Although the issue of intellectual property rights (IPR) has not been a "show stopper" to the ITS Program, it merits close scrutiny because it has caused delays in operational testing, and the same issues may arise in connection with ITS deployment projects using federal funds.

• Address Intellectual Property Rights (IPR) issues early and develop a clear policy. The assignment of IPR will always be an issue and ITS practitioners must recognize this fact and address the issue. The participants in the metropolitan model deployment initiatives (MDIs) were forced to resolve this issue before continuing on the MDI projects. Many of these participants had actually dealt with IPR issues in ITS work predating their MDI project.

• As a starting point to resolving IPR concerns, administrators from both the AZTech and the Smart Trek MDIs based their policy on the Federal Government’s policy on intellectual property. In Phoenix, the Federal Government policy was included in all contracts between the public and private sectors. In both the Smart Trek and the AZTech projects, the use of this policy significantly improved the contract negotiation process and helped to resolve the concerns of the contracting parties. Before implementing this policy, the public sector participants in the AZTech project experienced a four-month delay in negotiating a contract with their first vendor. After that, negotiations with other vendors took less time.

• In San Antonio, the parties built on an IPR policy that had already been developed by the Texas Department of Transportation (TxDOT) management for TransGuide before it became an MDI project. The pre-MDI contracts contained one paragraph covering IPR. The specifications for TransGuide software contained language that stated simply that all developed software would be the property of the State of Texas. For the TransGuide MDI, TxDOT management developed a stronger and more detailed language concerning software ownership. Each respondent to TxDOT's request for offers had to certify that they had agreed to that condition. In an expansion of the IPR clauses placed in each TransGuide contract, TxDOT staff established an Intellectual Property Committee and wrote a manual that covers intellectual property and includes sections that assigns all IPR for software created for the MDI to the TxDOT.

• There are three benefits for developing and disseminating a clear policy early in the life of the project:
  
  • Improves the contract negotiation process
  • Saves time by helping to resolve the concerns of both public and private parties
  • Aids in avoiding protracted negotiations as a result of contractual misunderstandings

  
  
  There are also three costs:

  • Staff time in authoring policy
  • Private partner objections may lead to delays
  • Potential loss of participation by qualified firms
• Create a policy to specifically address software and technologies brought into, enhanced, and developed during a project. In Phoenix, the AZTech private sector participants wanted to retain ownership and control of existing technologies, including commercial software, which they brought to the MDI. Conversely, the AZTech public sector officials focused on questions of ownership and control of products enhanced during the projects, as well as work developed solely with public sector funds.

• To address this issue, the AZTech public officials developed two licensing agreements: one for preexisting products and privately-funded developments and one for products developed during the course of the MDI using federal funds. The license for pre-existing products allows the public sector participants to make limited use of pre-existing products. The private sector partner 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. The licensing agreement expressly prohibits the public sector participants from making derivative works or from attempting to derive the source code of the products by reverse engineering, disassembly, or any other means. The private sector partner retains all ownership rights, including copyrights, to pre-existing products and privately funded developments.

• The second license pertains to government-funded developments on the AZTech Model Deployment. In this license, the public sector participants receive a royalty-free, non-exclusive and irrevocable license to reproduce, publish or otherwise use, and to authorize others to use, the government funded software, data and/or documentation solely for official governmental purposes. The private sector partner similarly retains all ownership rights, including copyrights.

• In Texas, under an agreement with the original software developer for TransGuide, TxDOT retained the licensed rights to the original software, but the TxDOT will only distribute the software to other government entities. Officials from the TxDOT San Antonio District believed that the original software development was performed in-house and the contractor merely performed the coding. In addition, the TxDOT licenses commercial-off-the-shelf software and equipment and does not assume ownership unless it is modified for TxDOT purposes. In that situation, TxDOT will assume full ownership and will copyright the modified software. Vendors are told of this policy during the proposal stage and sometimes have expressed concerns. Generally, the TxDOT uses a "work for hire" policy when hiring contract programmers, and the TxDOT copyrights the software.

• Develop a policy to specifically address the data collected once the project is implemented. In the state of Washington, staff members of the Washington State DOT (WSDOT) Advanced Technology Branch have raised IPR issues regarding the use of Smart Trek data. In an attempt to resolve them, the Smart Trek participants developed an advanced traveler information system (ATIS) business plan that included IPR issues and focused where policy, contractual, and other legal decisions must be made. The issue of the WSDOT supplying free traffic information on the Internet is discussed in the plan. The current WSDOT position is that such information is public information and should be available for free. However, the WSDOT also wishes to encourage private sector involvement in the dissemination of traffic information. The public’s free access to the information disseminated by the WSDOT may be perceived as competing with the enhanced, or value-added, data that ISPs supply for a fee. The WSDOT personnel expressed concerns that without the WSDOT current traffic information service, the public may have to pay to use information based on the raw data that the WSDOT collects and provides to the information service providers.

• In return for receiving raw data from WSDOT and the other MDI participants, the service providers will make value-added data available to WSDOT staff and other Smart Trek participants for use in traffic management functions. In accordance with the Smart Trek contractual agreements, the service providers own the value-added traffic and transportation data, and the Smart Trek participants cannot distribute the information to external entities. The ATIS business plan will include the discussion of the question regarding how a viable market for information service providers can be demonstrated, and how the WSDOT can provide some traffic information for free while enabling that market to develop.

The preceding lesson leading to successful ITS deployments that was documented by the public sector participants at the MDI sites is to recognize the issue of IPR and develop a policy to address it early in project development. It facilitates the relationship between public and private parties during contract negotiations, and throughout the project. It also helps to avoid the costs of delays when there are objections from the private parties involved. Confusion and disagreement over IPR issues can also lead to the potential loss of qualified private sector firms who won’t participate as a result. There are many models to choose from in addressing IPRs – the important lesson is to address it early.