By: Colleen V. Chien, Professor of Law at the University of California, Berkeley School of Law and co-director of the Berkeley Center for Law and Technology, and Jillian Grennan, Associate Professor of Finance and Sustainability at the University of California, Berkeley Haas School of Business. This post is part of a series by the Diversity Pilots Initiative. The Initiative will be hosting its second conference at Emory University Law School in Atlanta on Friday, September 20, 2024. Indicate your interest by signing up here.)

Which IP professionals ascend to partnership or top counsel roles? Which professors publish in the top journals? And which innovators become inventors? This question of who among lawyers, academics, or innovators reaches the next milestone in the progression of a career is relevant in many settings. It has been a central focus in the world of innovation since USPTO’s Director Kathi Vidal’s urgent call to ensure that we “get everyone off the bench” in order to solve world problems and foster economic prosperity.

This call is motivated by the observation that while women comprise 35% of the STEM workforce, they make up only 13% of inventors; Black professionals represent 9% of STEM workers but only 1.2% of inventors. What explains this innovator-inventor gap, the reduced rate at which underrepresented innovators become inventors?  Just as lawyers of varying backgrounds do not equally ascend in firms – with women comprising a slight majority of associates but just 24% of equity partners – the journey from conceiving an idea to becoming a named inventor on a patent is not just a matter of technical merit, but, rather, is significantly influenced by the broader work environment.  Because the progression from innovator to inventor happens largely behind closed, corporate doors, this critical gap has largely been overlooked and its causes, largely unexplored, despite technological innovations’ critical role as a driver of economic growth.

In our study, “Unpacking the Innovator-Inventor Gap: Evidence from Engineers,” which reports on a survey of close to 4,000 innovators across 4 firms, and collaborating firms’ invention disclosure databases, we use detailed administrative and survey data to unpack the forces underlying this gap and provide novel insights into the invention process, how it is influenced by firm policies, and its variation by demographics.  The study’s unique empirical data reveal that inventorship, far from being a rote translation of ideas into patents, reflects an opt-in, competitive process, in which only one-third of engineers engage with their firm’s formal invention submission processes, and only half of these submissions progress to the patent application stage.  Strikingly, participation rates for women at each step of this journey are significantly lower.

A closer examination of the data uncovers additional nuance. While the gender gap is pronounced at all stages of the patenting process, engineers from underrepresented ethnicities exhibit higher engagement levels in both initial ideation and later stages, suggesting distinct experiences and that the barriers and incentives likely differ across demographic groups.  An important take-away for practitioners is that one-size fits all policies to encourage inclusive innovation may not work, rather targeted strategies to address the specific hurdles faced by women and underrepresented ethnicities are warranted.

We gain insights into the process of inventing and the challenges engineers face in going from having an innovative idea to becoming a named inventor by interviewing thirteen patent professionals and the resulting survey of engineers across various collaborating high-tech firms.  The next two figures highlight a key finding takeaway from our study.  Namely, that the path from ideation to patenting is a process fraught with potential frictions attributable to firm policies and systems, cultural norms, and personal experiences.

Figure 1. Variations in the invention submission process across firms

Figure 1 reveals the varied approaches employed by firms in the invention submission process. This figure captures the essence of the diverse practices across different organizations, showcasing the differences in how ideas are collected, reviewed, and iterated upon based on feedback. It serves as a window into the dynamics between engineers, patent professionals, and patent review boards.

Figure 2. Factors influencing the invention submission process

Figure 2 complements Figure 1 by delineating the myriad factors at both the firm (external) and individual (internal) levels that influence an engineer’s decision to submit an inventive idea. It categorizes firm-level factors into informal and formal institutions, such as culture and management practices, while individual-level traits include personal characteristics, early-life experiences, and desires for work-life balance.

Together, these figures underscore the need for a holistic approach to fostering an inclusive inventive environment, one that not only encourages the generation of new ideas but also supports their refinement and submission through processes that are equitable and transparent. As high-tech firms reassess their internal policies and practices, it is helpful to know the specific factors engineers perceive to be working for and against the invention process, in order to cultivate an environment where innovation can thrive.

Using well-established survey techniques, we determine a relative pecking order of factors that contribute to the innovator-inventor gap.  The hierarchy among factors contributing to the innovator-inventor gap as revealed by engineers is management, motivation, culture, the invention submission and review process, mentoring, peer influence, and last personal characteristics. Again, though, we observe that women and URMs perceptions of the factors facilitating invention are distinctive.

For instance, leadership and management practices influence the innovation-invention gap. Better management is the top factor that would increase idea submission. The disparity in engineers’ perception of management is notable, with women and URGs less likely to view management as supportive in the inventing process. Additionally, motivational factors, both extrinsic and intrinsic or pro-social, significantly influence idea submission, with a notable difference in URGs’ desires for creating social value.  Third, corporate culture, especially in terms of aspirational values like collaboration and integrity appear to contribute to the innovator-inventor gap. Female engineers are significantly less likely to (i) experience managers explaining important details, (ii) have people with whom to collaborate, and (iii) experience managers being ethical and making fair decisions. Overall, the creation of a pecking order underscores that the gap is linked to changeable aspects of companies, like management practices and corporate culture, rather than unique individual determinants.

Why is it important to address the inventor-inventor gap?  The final part of our study, in which we examine the patents granted not only to firms in our study, but all U.S. public firms, supplies one answer. We find that patents with female inventors working at firms with meaningful frictions in the innovation process, as proxied by ineffective culture and poor management, are of higher quality and more likely to be in the top 10 percent of citations than the patents of their male counterparts. This outcome is consistent with a model we present which predicts that the costs females face in refining the signal of the patent-worthiness of their inventive idea are higher because of the practices such as inadequate feedback early in the submission process or a lack of peers to collaborate with. Therefore, developing and testing pilots to address these types of information barriers is a particularly promising direction for research and policy.

In conclusion, “Unpacking the Innovator-Inventor Gap: Evidence from Engineers” presents new evidence on the competitive, opt-in nature of the invention process inside high-tech firms and determinants of the innovator-inventor gap, where STEM professionals transition unevenly to being named inventors. Most previous work on inventors focuses on factors influencing the extensive margin like access to STEM education or factors influencing the intensive margin like financial incentives. Our results point to a new, important locus point for inclusive innovation – the workplace and – frictions in the invention process within firms – as a critical factor that determines both who becomes an inventor and the quantity and quality of inventions they pursue. These frictions in the invention process help explain why there is a more pronounced innovator-inventor gap for females. Importantly, we provide evidence that these frictions are so costly to females that they prevent high quality and potentially impactful ideas from being disclosed to society.

By implementing targeted interventions and fostering a culture of inclusion, high-tech firms can unlock the full potential of their diverse workforce, driving forward the frontiers of innovation and securing their competitive edge in the global marketplace. As this analysis has shown, the path forward requires a commitment to systemic change, guided by empirical evidence and grounded in a deep understanding of the challenges faced by underrepresented inventors.

Three main takeaways:

1. Innovator-Inventor Gap: Only one-third of engineers submit ideas through their firms’ formal invention processes, and just half of these become patent applications. Women participate significantly less at each stage in the journey from potential innovator to patented inventor.
2. Pecking Order of Factors Influencing the Gap: One key advantage of using a survey to unpack the forces driving the innovator-inventor gap is we hear directly from the engineers who are driving technological progress about their views of the inventive process at their firms.  The hierarchy among factors contributing to the innovator-inventor gap as revealed by engineers is management, motivation, culture, the invention submission and review process, mentoring, peer influence, and last personal characteristics.
3. Economic implications of the Gap: Analysis of citation patterns suggests that high-quality patents are lost in firms with larger gender gaps. Female inventors at firms with more frictions in the invention process receive significantly more forward citations and are more likely to have their patents be in the top decile of citations, consistent with the marginal lost inventions from women being of high quality.

Read the full paper here: Chien and Grennan, Unpacking the Innovator-Inventor Gap: Evidence from Engineers

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Guest post by: Lolita Darden, Chair, U.S. Patent and Trademark Office Patent Public Advisory Committee; Managing Partner, Darden Betts Strategic Intellectual Property Counselors; Visiting Associate Professor, George Washington University Law School.  This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. The first blog in the series is here and resources from the first conference of the initiative are available here.)

This year the Patent Public Advisory Committee, also known as PPAC, turns 25.  Established in 1999, PPAC is a 9-member advisory committee appointed by the Secretary of Commerce. Each member serves a 3-year term, and I am starting my second year. The primary purpose of the Committee is to review the policies, goals, performance, budget, and user fees of the USPTO with respect to patents. The Committee is also charged, by statute, to advise the Director of the USPTO on these matters and to prepare a report to Congress on the advisory actions the Committee has undertaken during the calendar year. You can find the 2023 PPAC Annual Report

As the new Chair of PPAC, I look forward to collaborating with the Committee and Director Vidal to serve the interests of the American people and the IP community in ways that enhance national and global competitiveness, accelerate growth in GDP, and drive innovation and entrepreneurship.

For those of you not familiar with PPAC, another function of the Committee is to provide the Director with feedback from our constituents about initiatives being undertaken by the USPTO with respect to patent matters. In that regard, I view my role as Chair as a facilitator, working closely with Committee members to provide advice and counsel to the Director based on feedback received from our respective constituencies.

This year, PPAC will continue to work with Director Vidal to link patents and invention more explicitly to national competitiveness, through both increasing invention activity and making patent protection available to more inventors around the U.S. It is widely known that innovation is a key driver of competitiveness and long‐term economic growth. It is also known that patents are important measures of innovation. Recent studies show that significant increases in U.S. innovation are achievable by encouraging inclusive innovation, which involves bringing under-represented individuals and communities into the innovation ecosystem. For example, ,” which represents substantial potential growth to the United States economy.

In my capacity as a private citizen and law professor, I have devoted countless pro bono hours assisting under-resourced inventors with protecting their rights in intellectual property, as well as educating them regarding the benefits of protection.  Research shows that the biggest deterrent to the pursuit of IP protections by individuals from historically resourced communities is awareness.  My vision for increasing the number of participants in the innovation ecosystem from under-resourced communities is education.  Ideally, law schools and law firms would pledge to offer community-based programs educating inventors from under-resourced communities about IP basics, i.e., what is protectable, how it can be protected, and pro bono resources for pursuing protection.  I am excited to continue this work of raising awareness in an advisory role as Chair of PPAC.

One of the interesting things about PPAC is that we are composed of individuals with different backgrounds and views on the U.S. patent system and how it should operate.  Nevertheless, we have been able to find common ground in thinking about how patents can best help the nation.  In addition to inclusive innovation, the Committee will continue to work to support the USPTO’s efforts to maintain a patent system that best serves the American people and the IP community.

Three main takeaways:

1. Role of PPAC: PPAC, established in 1999, is a 9-member advisory committee appointed by the Secretary of Commerce, serving 3-year terms. Its primary function is to review and advise on the policies, goals, performance, budget, and user fees of the USPTO with respect to patents, and to prepare an annual report to Congress on its advisory actions.
2. Focus on National Competitiveness and Inclusive Innovation: PPAC aims to enhance national and global competitiveness by linking patents and invention more closely, promoting increased invention activity, and expanding patent protection to more inventors across the U.S. The committee emphasizes the importance of inclusive innovation, highlighting that significant increases in U.S. innovation and economic growth could be achieved by encouraging participation from under-represented groups in the innovation ecosystem.
3. Education for Under-resourced Inventors: PPAC also aims to raise awareness and educational resources for under-resourced inventors about IP protection. This includes the vision to work with law schools and law firms to provide community-based programs on IP basics, aiming to increase the number of participants from under-resourced communities in the patent ecosystem.

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by Dennis Crouch

This post walks through a new petition for writ of certiorari involving claims that Valeant Pharma defrauded the U.S. government by using fraudulently obtained patent rights prop up its drug prices. [Read the Petition]

The False Claims Act (FCA), originally enacted in 1863 to combat contractor fraud during the Civil War, imposes civil liability on anyone who “knowingly presents” a “fraudulent claim for payment” to the federal government. 31 U.S.C. § 3729(a)(1)(A). The Act allows private citizens, known as “relators,” to bring qui tam actions on the government’s behalf against those who have defrauded the government. If successful, relators can recover up to 30 percent of the damages. 31 U.S.C. §§ 3730(b)(4), (d)(2).

To prevent opportunistic lawsuits, however, Congress has sought to strike a “balance between encouraging private persons to root out fraud and stifling parasitic lawsuits” (more…)

By Chris Holman

Last week the U. S. Patent and Trademark Office announced the winner of this year’s National Patent Application Drafting Competition (NPADC), the University of Missouri-Kansas City School of Law. I teach patent law at UMKC, and was privileged to travel to Alexandria with the team of UMKC students (pictured below, from left to right, Will Knutson, Mark Trompeter, Joe Hooper, and Lukas Fields) to watch them compete and ultimately triumph in the final round of the competition. I am sure a great deal of the credit for their success can be attributed to our adjunct faculty members teaching patent prosecution at UMKC, James Devaney (Shook Hardy & Bacon) and Jon Hines (Senior Patent Counsel at 3Shape).

I would encourage any law student interested in pursuing a career in patent prosecution to consider participating in the competition next year. In a nutshell, (more…)

by Dennis Crouch

I had been following the case of Teva v. Lilly for a few years.  Teva has traditionally been a generic manufacturer, but in this case sued Eli Lilly for infringing its patents covering methods of treating headache disorders like migraine using humanized antibodies that bind to and antagonize calcitonin gene-related peptide (CGRP), a protein associated with migraine pain. U.S. Patent Nos. 8,586,045, 9,884,907 and 9,884,908.  The patents cover Teva’s drug Ajovy, and allegedly cover Lilly’s Emgality. Both drugs were approved by the FDA in September 2018.  A Massachusetts jury sided with Teva and awarded $177 million in damages, including a controversial future-lost-profit award.

Although the jury sided with Teva, District Judge Allison Burroughs rejected the verdict and instead concluded that Teva’s patent claims were invalid as a matter of law for lacking (more…)

by Dennis Crouch

The Supreme Court has denied Vanda Pharmaceuticals’ petition for certiorari, leaving in place a Federal Circuit decision that invalidated Vanda’s patents on methods of using the sleep disorder drug Hetlioz (tasimelteon) as obvious.

Vanda had argued in its cert petition that (more…)

by Dennis Crouch

The recent eligibility decision in AI Visualize v. Nuance, __ F.4th __ (Fed. Cir. 2024), gives me pause to consider more general eligibility issues of AI Inventions. When does the design or creation of AI system elements qualify as an eligible invention?  In his recent article, Prof. Nikola Datzov wrote what we have all been thinking: “Innovative applications of AI are everywhere we look [and are] revolutionizing our society.”  Nikola L. Datzov, The Role of Patent (In)Eligibility in Promoting Artificial Intelligence Innovation, 92 UMKC L. REV. 1, 4 (2023).

In AI Visualize, the Federal Circuit (more…)

by Dennis Crouch

Seirus has petitioned for writ of certiorari in its long-running design patent dispute with Columbia Sportswear.  The petition asks two questions related to the comparison process for design patent infringement — in particular, the questions focus on what can qualify as “comparison prior art” used to provide context for the infringement analysis.

Questions presented: (more…)

by Dennis Crouch

The leading case on copyrightability of AI created works is now pending before the Court of Appeals for the District of Columbia. The case, Thaler v. Perlmutter, No. 23-5233 (D.C. Cir. 2024), centers on Dr. Stephen Thaler’s attempts to register a copyright for an artistic image autonomously generated by his AI system that he has named the “Creativity Machine.” The U.S. Copyright Office refused registration on the basis that the work lacked the required human authorship. Thaler filed suit challenging this determination.  The parties have now filed their briefs, along with one law professor amicus brief in support of Thaler.

(more…)

by Dennis Crouch

The Federal Circuit is set to consider the use of terms like “patented,” “proprietary,” and “exclusive” in commercial advertising can be actionable under § 43(a)(1)(B) of the Lanham Act when their use is not entirely accurate. The key issue on appeal is whether the district court erred in granting summary judgment for Crocs on Double Diamond Distribution and U.S.A. Dawgs’ (“Dawgs”) counterclaim for false advertising under the Lanham Act.

This case began back in 2006 (more…)

by Dennis Crouch

The Federal Circuit’s new decision in Luv’N’Care, Ltd. (LNC) v. Laurain and EZPZ, relies on the doctrine of unclean hands to deny relief to the patentee (Laurain and EZPZ), affirming the district court’s judgment.  The appellate panel also vacated and remanded the district court’s finding that LNC failed to prove the asserted patent is unenforceable due to inequitable conduct during prosecution, as well as its grant of summary judgment one of the asserted patents was invalid as obvious.  U.S. Patent No. 9,462,903. The case here involves bowls/plates attached to a mat to help avoid spills and for easy cleanup. 22-1905.OPINION.4-12-2024_2300689.

Unclean Hands: The doctrine of unclean hands is an equitable defense that bars a party from obtaining relief when they have engaged in misconduct (more…)

by Dennis Crouch

As many of you know, I have done machine learning work for many years — starting in the 1990s while in college.  However, like most of the world, I have been surprised and amazed by the power of LLM-based GenAI technology and have been trying to figure out ways to use it both for patent practice and in my job as a law professor.  I hope that it helps me become both more effective and more efficient.

On the Patently-O side, I have been honing my approach somewhat. I tried to have a GenAI tool (like ChatGPT or Claude) simply write a blog post for me, but those attempts largely failed because the results lacked insight, and the tools continue to make up wrong answers (i.e., hallucinate).  My approach recently has been to first write a draft blog post myself, then refine it with insights from a GenAI — I typically seek input on any errors in my post and suggestions on what else I might have said.  I also have been using these tools for small idea generation if I ever have writer’s block. Although I write one or more blog posts almost every day, I also have about 1,000 unfinished posts, many of which I have been sitting dormant because I wasn’t quite sure how to wrap up.  These days when I get to a blocking point, I will typically ask an AI tool to help me brainstorm (“provide me with five ideas of what to write next”).  The ideas are often not very good, but sometimes they are good. And, I almost always find that one of them triggers an idea of what to do next.  The bottom line then is that this is helping me to finish more work, although I’m still working on improved quality.

I have also been using an AI tools for transcribing Federal Circuit oral arguments – this is a bit more complicated and required some python and API calls to make it work.  The tools do a great job with automated transcription, including catching legal phrases without much trouble. But, my current version does not distinguish between speakers.  I’m hoping this summer to finish the project of automating serialization so that the transcript looks like a real court transcript.

In my patent prosecution class, the students are busy drafting a patent application.  This year they are using a drafting tool known as Edge created by Evan Zimmerman that has an especially good chat-tool for creating a detailed invention disclosure.  It is really fun to see the students dig deeply into this. I envision GenAI assisting with lots of tasks, prior art searches (including detailed comparison to claims), office action responses, specification drafting (including multiple prophetic examples), and (more…)