Legal Problems Arising out of Highway Programs. Topic 22-03. Primer on Patentability and Use of Ideas Developed by Contractors Performing Work for State and Federal Transportation and Local Planning Agencies

The Patent Law provides that inventors can obtain patents on processes, material, or systems which they invent/develop (35 USC 101) . "A patent is essentially a limited monopoly whereby the patent holder is granted the exclusive right to make, use, and sell the patented innovation for a limited period of time." When a product is developed with the use of Federal funds, the inventor can elect to patent the invention. See 35 USC 200-212. The same rule applies to situations involving federal funds distributed to State and local agencies. In such cases, the Federal government receives a nonexclusive, royalty- free license to use the product. If a State or local agency wishes to use the product, it must do so in a contract. Many different issues arise in the interpretation and application of this general rule. For example, non disclosure of the fact that a patent was developed with Federal funds does not render the patent unenforceable. Considerable confusion exists in the interpretation and application of these principles. State and local transportation agencies often use patented products developed under contracts with Federal funds. These agencies are often targeted in patent infringement suits. Confusion exists over the agencies' rights to use the products without a license. 35 USC 200-212 provides the statutory authority for these arrangements. Research is needed so that transportation officials can have guidance on this topic.


  • English


  • Status: Proposed
  • Contract Numbers:

    Project 20-06, Topic

  • Sponsor Organizations:

    Federal Highway Administration

    1200 New Jersey Avenue, SE
    Washington, DC  United States  20590

    American Association of State Highway & Transportation Officials

    444 North Capitol Street, NW, Suite 225
    Washington, DC  United States  20001

    National Cooperative Highway Research Program

    Transportation Research Board
    500 Fifth Street, NW
    Washington, DC  United States  20001
  • Project Managers:

    Chisholm-Smith, Gwen

  • Start Date: 20150305
  • Expected Completion Date: 0
  • Actual Completion Date: 0
  • Source Data: RiP Project 39191

Subject/Index Terms

Filing Info

  • Accession Number: 01556446
  • Record Type: Research project
  • Source Agency: Transportation Research Board
  • Contract Numbers: Project 20-06, Topic
  • Files: TRB, RiP
  • Created Date: Mar 6 2015 1:00AM