The second major new Senate patent bill focuses on reconstructing AIA trials — particularly by reducing availability and power of inter partes review and post grant proceedings. The bipartisan Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act was introduced by Senators Chris Coons (D-Del.),Thom Tillis (R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii).
Limiting Standing: Parties could only file IPR petitions if they would have standing to bring a declaratory judgment action in Federal Court.
Clear and Convincing Evidence: Invalidating a patent before the PTAB would require proving unpatentability of a previously issued claim by clear and convincing evidence. This is a substantially higher standard than the current requirement of preponderance of the evidence.
Separating Institution from Trial: Judges who participate in the institution will would be forbidden from then serving on the trial team. The idea here is to avoid holdover bias against the patent that may have been established during the institution stage.
Drop Invalidity Defenses: If an IPR is established, the petitioner must drop any invalidity defenses from pending litigation that could have been raised in an IPR.
No Interference: Although the Director still has power of Director Review, the law would forbid the Director from interfering or influencing PTAB IPR decision-making.
The press release also notes the following provisions:
Require standing for PTAB challengers and limit repeated petitions challenging the same patent;
Harmonize PTAB claim construction and burden of proof with federal district court;
End duplicative patent challenges by requiring a party to choose between making its validity challenges before the PTAB or in district court; and
Increase transparency by prohibiting the USPTO director from influencing PTAB panel decisions.
IPRs would remain valuable if this bill became law, but their scope would be substantially limited.
Senators Tillis and Coons have released their “Patent Eligibility Restoration Act of 2023” designed to overturn the Supreme Court case of Mayo and Alice Corp. The impact here is to return eligibility doctrine back to the mid 2000s when almost any useful advance was likely patent eligible.
Here are some key points:
1. Elimination of Judicial Exceptions: The Act proposes to eliminate all judicial exceptions to patent eligibility. “Under this Act, and the amendments made by this Act, the state of the law shall be as follows: (A) All judicial exceptions to patent eligibility are eliminated.”
2. Statutory Ineligibility Categories: The Act specifies that that the following are not eligible: (A) mathematical formulas that are not part of an invention; (B) processes that a human could practically perform that are “substantially economic, financial, business, social, cultural, or artistic” even if the process itself requires a machine; (C) mental processes performed solely in the human mind or processes that occur in nature wholly independent and prior to any human activity; (D) unmodified human genes (“as that gene exists in the human body”); and (E) unmodified natural material (“as that material exists in nature”)
3. Claims as a Whole: When determining eligibility, the tribunal must consider the claims as a whole without discounting or disregarding any claim element and without regard to its novelty or conventionality.
The Federal Circuit’s decision in Broadcom v. Netflix revolves around the construction of the claim term “drive server” found in Broadcom’s U.S. Patent No. 6,341,375. The decision reaffirms the significance of preferred embodiments in claim construction and their potential to shape the validity of patent claims.
The basic question in the case is whether a “drive server” requires computing capabilities, or is storage capacity enough. Although the plain language of “server” suggests computing capacity, the court agreed with the PTAB that the intrinsic evidence, including the claim language and the specification, supported the broader interpretation. In the IPR, Broadcom was seeking the narrower construction in order to avoid prior art. Under the broader construction, the claims were found invalid as obvious.
The important part of the case serves as a reminder of the power of “preferred embodiment” language within the patent specification. In this case, Qualcomm had included a preferred embodiment of a DVD drive server, also known as a disk library, that contained a number of DVD drives and associated disks. Broadcom admitted that its proposed construction would exclude this preferred embodiment if the disk library contained no additional computer. On appeal, the Federal Circuit quoted Vitrionics in its conclusion that: Claim constructions that exclude a preferred embodiment are “rarely, if ever, correct and would require highly persuasive evidentiary support.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (opinion by Judge Michel). In this case, that evidentiary support was lacking. Invalidity affirmed.
Since Vitrionics, the Federal Circuit has placed additional weight upon intrinsic evidence — something that seemingly should give the recited principle even more power.
This week, the Supreme Court is considering the re-filed certiorari petition of Franz Wakefield, dba CoolTVNetwork.com v. Blackboard, Inc., No. 22-819. The petition’s basis stems from the debate over Judge Newman’s competency. The appellate case was decided by a panel that included Judge Newman, and the petitioner relies heavily upon the public documents circulated in the ongoing disability hearing. Including the repeated statements suggesting that Judge Newman lacks competence and “may suffer from impairment of cognitive abilities (i.e., attention, focus, confusion and memory).” The petition notes that Judge Newman’s colleagues acted unanimously to remove her from being assigned new cases. Wakefield is pursuing his case pro se and so it lacks some fine points, but the thrust of the claims here are quite clear.
On the 22nd of June, the court will also consider petitions in two additional IP cases that both focus on IPR procedure grounded in statutory interpretation:
Apple Inc. v. CalTech, No. 22-203: Scope of estoppel following IPR. After losing an IPR, when can defendant later raise similar issues in district court?
Nike v. Adidas, No. 22-927: Can the PTAB raise its own patentability objections to substitute claims that are different from those raised by the patent challenger?
As always, the odds are on denial, and we’ll know something by early July.
The Federal Circuit’s special investigation committee recently released an order in focusing on next steps in its ongoing investigation into the conduct and capacity of Judge Newman. Although the investigation generally centers on disability and misconduct in her role as judge — the most recent order narrows the focus to the question of whether Judge Newman’s refusal to submit to medical testing constitutes misconduct that could potentially lead to her removal from the bench. The committee’s next steps will be to hold a closed-door hearing on July 13 solely on this issue. The committee appears to be tacitly admitting that its allegations of general misconduct are insufficient alone and that it cannot prove disability without a medical evaluation. Still, the committee is moving forward methodically and the order indicates that the refusal-to-cooperate is one area that it could fairly efficiently review and reach a conclusion sufficient to make a final recommendation to the Judicial Council, despite Judge Newman’s lack of cooperation.
Confidentiality: The court’s decision to refuse Judge Newman’s request for a public hearing is another important aspect of this case. This decision raises questions about transparency and the public’s right to know about proceedings that could potentially impact the composition of the judiciary. The order explains the committee’s reasoning:
The court begins with a strong presumption that all proceedings that form part of the Committee’s investigation should be confidential, as mandated by the Judicial Conduct and Disability Act of 1980 and the Rules for Judicial-Conduct and Judicial-Disability Proceedings.
Confidentiality facilitates the investigative process and is almost universally accepted.
Opening the argument to the public carries a grave risk of inadvertent disclosure of both witnesses’ identities and confidential details of witness statements, which could impair the investigative process.
The court believes that a public hearing may include references to materials that have not been made public, and that discussion may disclose information that would identify witnesses or confidential details of witness statements.
The court believes that a better approach to permitting some public transparency would be to consider releasing a redacted transcript after the argument has been completed.
The court argues that the cases defining a right of access to trials are of limited usefulness in the context of the fundamentally different procedures of judicial disciplinary boards, which do not have a long history of openness.
This essay focuses on proposed Advancing America’s Interests Act (H.R.3535) which aims to limit NPE access to the ITC by refining the economic prong of the domestic industry requirement and by adding a stronger public interest consideration prior to issuance of an exclusion order.
The International Trade Commission (ITC) is a branch of the U.S. government focused on protecting domestic industry against undue foreign competition. The ITC’s power extends in to several areas, but primarily by enforcing the laws of (1) intellectual property rights; (2) anti-dumping; and (3) countervailing duties.
Intellectual Property Rights: Section 337 investigations constitute a significant portion of ITC’s enforcement activities. These investigations patent, trademark, or copyright violations caused by trade importation into the US. The ITC has the power to issue an exclusion order — much like an injunction — to bar infringing products from entering the US.
Anti-dumping and Countervailing Duties: The ITC can impose anti-dumping duties on foreign manufacturers selling goods in the U.S. at less than fair value. The ITC can also impose countervailing duties to counter effects of foreign subsidies on products imported into the U.S.
Because the ITCs key role is protecting US industry, the agency can only act if there is a domestic industry to be protected. In recent years, the ITC and Federal Circuit have expanded the scope of what counts for ITC domestic industry. For instance, US investments in licensing of IP have been increasingly recognized as a major factor in establishing the economic prong of the domestic industry requirement. And, patent holders have been able to rely upon uses of their technology licensees as evidence of a domestic industry. Likewise, R&D may also satisfy the requirements. Changes like these have broadened the scope of the domestic industry requirement, making ITC action accessible to industries and companies that may not have traditional manufacturing facilities or significant capital investments in the United States. — i.e., non practicing entities.
H.R.3535 – Advancing America’s Interests Act (AAIA). This proposed legislation aims to amend Section 337 of the Tariff Act of 1930 to counteract some of these expansions by narrowing the definition of domestic industry. This is the third time that Rep Schweikert has introduced the legislation. And, the basic thrust is that non-practicing patent holders would have real difficulty in bringing Section 337 complaints.
Key features of the proposed amendments include:
Licensing Activities: The Bill seeks to refine the economic prong of the domestic industry requirement by requiring that complainants demonstrate their licensing activities have led to the development of a product. This change is intended to prevent Non-Practicing Entities (NPEs), which often license their patents under threat of patent infringement suits, from establishing a domestic industry. This adjustment is designed to still permit entities who license patents as part of a technology transfer leading to new products, to assert their intellectual property rights at the ITC.
Unwilling Licensees: The Bill proposes changes regarding the use of “unwilling” licensees to establish a domestic industry. Currently, a third-party licensee can be subpoenaed for confidential information, regardless of their desire to participate in the investigation. The proposed Act stipulates that the patent owner can only rely on the licensee’s activities to establish a domestic industry if the licensee joins the complaint under oath.
Public Interest and Exclusion Orders: The Act introduces a significant shift in how the ITC considers exclusion orders. It requires the ITC to affirmatively determine that any exclusion serves the public interest. This change effectively removes the current presumption in favor of exclusionary relief — making ITC action more akin to the eBay analysis in district court..
Expedited Fact Finding: The Act would codify the ITC’s existing “100-day early disposition program,” directing the ITC to consider at the beginning of an investigation whether there are potentially dispositive issues appropriate for an early Initial Determination by the presiding administrative law judge.
ITC action became much more popular in the wake of eBay and the difficulty of obtaining injunctive relief in district court. The proposal here would shift that dynamic once again and would represent a significant shift — coupled with the limits on NPE filings. If passed, this legislation would reshape the ITC’s approach and its effectiveness for many patent holders.
The USPTO began establishing satellite offices a decade ago to expand beyond the traditional Alexandria (Washington DC) headquarters. We now have offices in Detroit, Dallas, Denver, and San Jose. Last year, Congress voted to further expand the decentralization by at least one more. The Unleashing American Innovators Act of 2022 (UAIA) mandates creation of a Southeast Regional Office (SERO). The USPTO is now seeking comments on where the office should be located — and the methodology it should use in selecting a location. [Fed Reg].
The statute requires that it be located in Virginia, North Carolina, South Carolina, Georgia, Florida, Tennessee, Alabama, Mississippi, Louisiana, or Arkansas. I would automatically rule-out Virginia and North Carolina as too close to the PTO HQ; and also rule-out Arkansas as too close to the Dallas Office. In my mind, I quickly narrowed things down to four potential cities: Atlanta, Jacksonville, Miami, and Nashville.
In my comments to the PTO, I will be including the results of this poll:LinkedIn Poll. Voting is open for a few more days. Atlanta is currently in the lead.
The core objective here is to is to deliver better services to citizens and inventors in the region; be more responsive to their needs; and drive positive changes in these regions. Simultaneously, the Community Outreach Office aims to provide a platform for dialogue, bridging the gap between citizens and the government. The statute sets out five particular considerations:
Strengthen connections between the Office and patent filers through enhanced outreach to a broad spectrum of innovators including underrepresented, rural, low-income, and student populations.
Improve retention of diverse patent examiners and judges, taking into account economic, geographic, and demographic factors.
Enhance the recruitment process to attract more high-quality patent examiners.
Reduce the backlog of pending patent applications.
Elevate the standards of patent examination to ensure greater accuracy and quality.
In addition to the new Southeast Regional Office, the PTO has also been tasked with opening a “Northern New England Community Outreach Office (NNECOO)” and the PTO is seeking comments on its location as well. The USPTO will be also be conducting a study to identify whether more regional offices would benefit US innovation.
An every day part of patent practice is arguing about whether a cited prior art reference teaches a particular claim limitation. That analysis is not always an easy task because prior art is often quite cryptic as are the patent claims being evaluated. One way to look at the process is an interpreting of the prior art to see if it teaches the claim. In that form, the process is seen a question of fact that must be based upon substantial evidence and reviewed with deference on appeal. Tribunals also often use an alternative approach that involves a question of law reviewed de novo on appeal. In the alternative approach, the patent claim is interpreted to see whether it covers the the prior art in the process known as claim construction. The difference between these two approaches is subtle, but often with huge results.
In its recent Roku decision, the Federal Circuit provides an example of these two approaches. Roku, Inc. v. Universal Electronics, 63 F.4th 1319 (Fed. Cir. 2023). The 2-1 majority decided to interpret the prior art to see whether it taught the claimed multiple “communication methods.” The court found value in “both sides of this factual question,” but ultimately gave deference to the Board’s conclusions. In her dissenting opinion, Judge Newman contended that the majority overlooked the established principle that the obviousness is a question of law that should be reviewed afresh, or ‘de novo’.
Universal Remote: In its IPR petition, Roku presented the prior art (“Chardon”) that described a universal remote control that uses two different types of communications codes (CEC and IR) in order to control various devices. Chardon includes a table with CEC and IR codes for each different type of action that might be needed. The patent at issue claims the use of “two different communication methods.” The panel majority endorsed the Board’s factual finding that a “listing of command codes does not teach or suggest a listing of communication methods.”
In its rehearing petition, Roku argues that the panel majority’s analysis conflicts the Supreme Court’s repeated statement that obviousness is a question of law. Rather, according to Roku, the majority’s treatment of obviousness as effectively a question of fact contravenes 150 years of precedent holding that obviousness is a question of law. This shift could have far-reaching “pernicious consequences.”
Roku’s bad-consequences argument centers on two main points. First, they assert that the majority’s approach could undermine the uniformity of obviousness jurisprudence. I.e., the Court is effectively deferring to lower tribunals on the question of obviousness. This, they contend, contradicts a key purpose of the Court’s exclusive patent jurisdiction, which is to ensure nationwide uniformity in patent law. It also undermines the requirement set out in KSR that the obviousness analysis must be made explicit.
Second, Roku suggests that the majority’s methodology could lead to undesirable substantive outcomes — allowing for patents on trivial distinctions from the prior art. Roku argues that such trivial advances should not warrant patent protection as they do not represent real innovation and can hinder progress. They also caution that the majority’s approach could lead to genuine inventions being deemed unpatentable if the Court simply affirms factual findings without conducting a de novo analysis of obviousness. The argument here is that the appellate court is in a better position to judge obviousness than the PTAB or a Jury.
In re Couvaras, 2023 WL 3984753 (Fed. Cir. June 14, 2023)
A prima facie obvious combination of prior art chemical compounds can sometimes be deemed nonobvious if the result of the combination is sufficiently surprising, such as when a combination of pharmaceutical active ingredients results in an unexpected synergy. See, e.g., Sanofi-Aventis Deutschland GmbH v. Glenmark Pharms. Inc., USA, 748 F.3d 1354 (Fed. Cir. 2014). In a recent Federal Circuit decision, In re Couvaras, Judge Lourie (writing for a unanimous panel) explains the important distinction between unexpected results in a pharmaceutical combination product as opposed to the mere recitation of an unexpected mechanism of action.
The case is an appeal of a Patent Trial and Appeal Board decision affirming an Examiner’s rejection of the claims at issue as obvious. A representative claim recites:
11. A method of increasing prostacyclin release in systemic blood vessels of a human individual with essential hypertension to improve vasodilation, the method comprising the steps of:
providing a human individual expressing GABA-a receptors in systemic blood vessels due to essential hypertension;
providing a composition of a dosage of a GABA-a agonist and a dosage of an ARB combined into a deliverable form, the ARB being an Angiotensin II, type 1 receptor antagonist;
delivering the composition to the human individual’s circulatory system by co-administering the dosage of a GABA-a agonist and the dosage of the ARB to the human individual orally or via IV;
synergistically promoting increased release of prostacyclin by blockading angiotensin II in the human individual through the action of the dosage of the ARB to reduce GABA-a receptor inhibition due to angiotensin II presence during a period of time, and
activating the uninhibited GABA-a receptors through the action of the GABA-a agonist during the period of time; and
relaxing smooth muscle of the systemic blood vessels as a result of increased prostacyclin release.
Judge Lourie leads off the decision by observing that, while the claims at issue “literallyrecite methods of increasing prostacyclin release … by co-administering two well-known types of antihypertensive agents[, i]n reality, the claims relate to combatting hypertension with known antihypertensive agents and claiming their previously unappreciated mechanism of action.”
He then affirms the Board’s conclusion that it “is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.” It was undisputed that the two types of active agents recited in the claims, GABA-a agonists and ARBs, were both known to be useful for alleviating hypertension.
The appellant, citing Honeywell International Inc. v. Mexichem Amanco Holdings S.A., 865 F.3d 1348, 1355 (Fed. Cir. 2017), argued that the mechanism of action recited in the claims, i.e., the increased release of prostacyclin, was unexpected, and that the Board had erred in dismissing the limitation as having no patentable weight due to inherency. But the Federal Circuit rejected this argument, noting that “Honeywell held that ‘unexpected properties may cause what may appear to be an obvious composition to be nonobvious,’ not that unexpected mechanisms of action must be found to make the known use of known compounds nonobvious.” The court agreed with the Board that the recitation of various mechanistic steps in the claims was insufficient to overcome the prima facie obviousness of the claimed methods, observing that:
While mechanisms of action may not always meet the most rigid standards for inherency, they are still simply results that naturally flow from the administration of a given compound or mixture of compounds. Reciting the mechanism for known compounds to yield a known result cannot overcome a prima facie case of obviousness, even if the nature of that mechanism is unexpected.
. . .
To establish unexpected results, Couvaras would have needed to show that the co-administration of a GABA-a agonist and an ARB provided an unexpected benefit, such as, e.g., better control of hypertension, less toxicity to patients, or the ability to use surprisingly low dosages. We agree with the Board that no such benefits have been shown, and therefore no evidence of unexpected results exist.
Guest post by W. Keith Robinson, Professor of Law, Faculty Director for Intellectual Property, Technology, Business, and Innovation, Wake Forest University School of Law. Watch his video proposing a Law and Technology Pipeline Consortium. 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. Sign up for research updates.
The patent system is a foundational part of the United States’ innovation ecosystem. The country created a national patent system in 1789. While the patent system has evolved over 200 years, it has remained stagnant in one glaring way. The number of inventors and patent professionals that are women or belong to underrepresented racial and ethnic groups is alarmingly low as compared to white men. While this disparity raises concerns about inclusivity, it also raises the possibility that there are untapped reservoirs of creativity and innovation within our borders.
For example, a 2016 study by the Innovation Technology and Innovation Foundation revealed that 3.3% of U.S.-born innovators identified as Hispanic, and 0.4% of U.S.-born innovators identified as black or African American. The same study found that women represent just 12% of U.S.-born innovators. These numbers might seem staggering to some. Others might genuinely ask why these numbers should raise concerns.
One need look no further than the changing demographics of the U.S. Census data from 2020 indicate that the share of the U.S. population that identifies as White has declined for several decades. The U.S. is becoming more diverse, and it seems this trend will continue. In Peter F. Drucker’s book, Innovation and Entrepreneurship, Drucker argues that demographics are the clearest external source of innovative opportunity. Underrepresented innovators tend to address overlooked problems that are inherent to their communities. The country’s changing demographics could provide a wealth of untapped innovative opportunities.
The question then, is what is the cause of the demographic disparity in the patent system, and how can we address it?
In his book, Black Inventors in the Age of Segregation, Rayvon Fouché identifies three primary factors that historically hindered black innovation – (1) limited personal networks; (2) lack of access to legal information and advice; and (3) scarcity of capital. These factors remain challenges for underrepresented groups today. Addressing these challenges, particularly the second, could help increase the number of inventors from underrepresented groups.
As part of my educational and research mission, I am working to build partnerships with government agencies, undergraduate universities, law schools, and corporations to bridge the representation gap in patent-related careers. This proposed consortium seeks to accomplish three primary objectives:
Increase the number of patent agents that identify as belonging to an underrepresented racial or ethnic group.
Foster informed inventors that identify as belonging to an underrepresented racial or ethnic group.
Increase the number of patent attorneys in the United States that identify as belonging to an underrepresented racial or ethnic group.
To accomplish these objectives, the consortium will need to build a robust and accessible IP curriculum. The consortium will work with selected universities, particularly Historically Black Colleges and Universities (HBCUs) with strong engineering and scientific programs. The program will also collaborate with law schools in areas near these universities. This strategy will create a robust pipeline for underrepresented students to gain valuable insight into intellectual property and the patent process early in their academic journey.
What will the U.S. innovation landscape look like if we can accomplish these objectives? Underrepresented populations may have greater access to legal assistance. With this access, more ideas can become viable inventions, furthering the collective innovative potential of the country. Further, employees from underrepresented groups will have a better understanding of how their innovative contributions can be exploited. This may lead to greater innovative activity within firms.
These goals may seem ambitious and costly. However, the costs and resources needed to increase diversity in the patent system should be seen as an investment that can yield significant dividends in the long run. There are potentially significant economic and societal gains that could be realized from a more diverse and inclusive patent system. Diverse teams have been shown to be more innovative and creative, bringing a wider range of perspectives and problem-solving approaches to the table. One law firm that has made significant investments in this area is Schwegman Lundberg & Woessner. Their SLW Academy is a free educational resource that provides “practical instruction and opportunities to students who are traditionally underrepresented in intellectual property.”
Another concern is that such initiatives will cause people to be hired or promoted based on their sex, racial or ethnic background rather than their qualifications and experience. This perspective fails to consider the systemic barriers (many of which Fouché discusses) that have prevented underrepresented groups from participating fully in the patent law profession. I am not advocating for the hiring of underqualified individuals for the sake of diversity. Instead, I seek to create opportunities for individuals who, due to systemic issues, might not have had the chance to fully demonstrate their potential.
Closing the disparity gap in patent law and innovation will not happen overnight, nor will it be an easy task. However, the consortium offers a feasible and promising roadmap. By providing underrepresented groups with the necessary resources and opportunities, we can stimulate innovation, increase economic productivity, and foster an innovation ecosystem that truly reflects the diversity of the United States. If we are to believe that innovation knows no gender or color; it is time our profession reflected the same.
Help us shape a more inclusive future in patent law and innovation. If you are a member of a government agency, a university, a law school, a corporation, a law firm, or an individual committed to bridging the representation gap in patent-related careers, we’d love to collaborate. Let’s work together to build a more robust pipeline for underrepresented students and unleash untapped innovative potential within our country.
The U.S. Patent and Trademark Office (USPTO) has announced a call for nominations for membership in its esteemed Patent Public Advisory Committee (PPAC) and the Trademark Public Advisory Committee (TPAC).
These committees were established under the Patent and Trademark Office Efficiency Act in 1999 with the task of advising the Secretary of Commerce and the Under Secretary of Commerce for Intellectual Property on patent and trademark operations, including agency management, goals, performance, budgets, and user fees. Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, has repeatedly highlighted the central role of these committees in helping her to guide the agency’s strategic actions and upholding the robust IP system that powers American innovation.
Each committee is composed of nine voting members who are chosen by the Secretary of Commerce to serve a three-year term. The USPTO is seeking nominations for up to three members for both the PPAC and the TPAC. The term for new members will begin on December 1, 2023. The deadline for nominations, which must be submitted electronically or postmarked, is July 3, 2023. If you are a U.S. citizen with a strong background in finance, management, labor relations, science, technology, or office automation, this could be your opportunity to influence the landscape of IP and promote innovation on a significant platform.
Here are three key goals for the next PPAC that I would promote:
1. Persistently advocating for the highest quality patent examination and to ensure enforceable patent rights. Much like a constant gardener, this task requires ongoing attention to accommodate the continual emergence of new innovation.
2. Harnessing ‘born digital’ opportunities to enhance efficiencies in patent examination and technology dissemination. This involves embracing digital transformation to revolutionize our approach to patent processes.
3. Championing the potential of beneficial innovation and the critical task of acknowledging that each individual possesses innate genius and transformative potential. It’s inspiring to witness the astounding results that can spring from establishing an environment that fosters growth and exploration.
To apply for membership in the PPAC or TPAC, please find the application forms at the following links:
The decision in Parus Holdings, Inc. v. Google LLC, — F.4th — (Fed. Cir. 2023), underscores the importance of adhering to the PTAB procedural requirements, particularly the prohibition against incorporating arguments by reference from one document into another during an IPR, as stipulated in 37 C.F.R. § 42.6(a)(3). The court’s affirmation of the PTAB’s decision not to consider arguments and evidence that violated this rule sends a clear message to future litigants: all arguments must be explicitly presented in the briefs, and the PTAB is not obligated to consider evidence or arguments that are not properly presented.
During the IPR the patentee (Parus Holdings) made a number of arguments supporting the validity of the challenged claims. Relevant for this appeal was its attempt to provide evidence showing it was the first to make the claimed invention, antedating the prior art. However, the PTAB declined to consider Parus’s arguments and evidence because of the procedural approach taken by the patentee. the substance of those arguments were made within several declarations, but not actually within the briefs. Rather, the briefs merely incorporated those arguments by-reference into its Response and Sur-reply briefs. The problem, PTAB practice rules prohibit incorporation by reference. 37 C.F.R. § 42.6(a)(3).
(3)Incorporation by reference; combined documents. Arguments must not be incorporated by reference from one document into another document. Combined motions, oppositions, replies, or other combined documents are not permitted.
Id.
On appeal, the Court of Appeals for the Federal Circuit affirmed the PTAB’s decision. The court agreed that the PTAB was correct in disregarding Parus’s arguments that were in violation of the rule (no abuse of discretion). The court also disagreed with Parus’s argument that the PTAB should have considered all record evidence, regardless of how it was presented. The justification here is that the PTAB is restricted to deciding cases on arguments that advanced by a party and to which the opposing party was given a chance to respond. Allowing subtle incorporation by reference raises potential confusion on these issues. The court further noted that Parus had almost 3,000 unused words in its Patent Owner Response and could have sought leave to exceed its word count under 37 C.F.R. § 42.24(a)(2) or reallocated more of its briefs to that argument, but chose not to use the avenues available to it. The result then is that the reference qualifies prior art and the obviousness holding stands.
In the case, the court noted that the patentee had an increased burden in this instance because it was not simply rebuffing claims from a patent challenger, but affirmatively asserting a pre-filing priority date.
When I look at the briefs, it looks awfully close to sufficient arguments. The following comes from the briefs by the patentee:
The inventors conceived of the claimed subject matter before Kovatch’s January 4, 2000 U.S. priority filing date. . . .
Here, the source code, documents, and testimony show that at least by July 12, 1999, Alexander Kurganov, and Valery Zhukov conceived of and invented the claimed subject matter while working on the web-based upgrades to the Webley Assistant. Kurganov Decl. at ¶ 13. . . .
As shown through Alexander Kurganov’s testimony, which is corroborated by the time-stamped source code, emails documents, and the testimony of Paul Mulka and Benedict Occhiogrosso, the inventors conceived of the subject matter no later than July 12, 1999. Following conception, the inventors were reasonably and continuously diligent as the Webley Assistant enhancements was the only project they were working on at Webley and they were employed full-time. The evidence produced in Mr. Kurganov’s declaration, along with the accompanying exhibits, demonstrate that the enhancements to the Webley Assistant reduced the ’431 and ’084 inventions to practice in a prototype no later than December 31, 1999, five days before Kovatch’s earliest filing date of January 4, 2000.
To the extent that it is argued that the ’431 and ’084 inventions were not reduced to a prototype until January 7, 2000, the date the last source code file was added to the source code revision system, the inventors worked diligently to reduce the invention to practice from the critical date of January 4, 2000, until the grammar file was entered into the source code revision system on January 7, 2000. See Ex. 2059, Occhiogrosso Dec. at ¶¶ 44-91; Ex. 2060, Mulka Dec. at ¶¶ 1-6; Ex. 2020, Kurganov Dec. at ¶¶ 103-119.
. . . To show diligence during this short period, Patent Owner relies on the source code revision logs and emails, as well as the testimony of Paul Mulka. The source code revision logs and Paul Mulka’s testimony shows that from December 1999 to early January 2000, the inventors were employed full-time on the Webley Assistant project, and every file, or file modification they committed to the source code revision system, was for the Webley Assistant project. Accordingly, the activity represented by these source code revision logs exceeds the reasonable diligence required.
On appeal, the court apparently concluded that the citations here were not specific enough.
The burden of production cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence. One cannot reasonably expect the Board to sift through hundreds of documents, thousands of pages, to find the relevant facts.
Slip Op. The court explained that a “detailed explanation of the evidence” is required under the rule, and this does not suffice.
===
NOTE – the court cites to 37 C.F.R. § 42.44, as requiring a “detailed explanation of the evidence.” However, that provision does not appear to be part of the Federal Regulation. The court has not previously required this level of explanation within the briefing.
As Dennis reported, the Supreme Court has granted certiorari in the case of Vidal v. Elster to determine if the PTO violated Steve Elster’s First Amendment right to free speech when it declined to federally register his trademark TRUMP TOO SMALL in connection with T-shirts. The PTO had denied registration under 15 U.S.C. § 1052(c), which provides that a mark cannot be registered if it “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.” In February, the Federal Circuit held that this provision is unconstitutional as applied to TRUMP TOO SMALL, a mark intended to criticize defeated former president Donald Trump’s failed policies and certain diminutive physical features.[2] The Federal Circuit held that, as applied to marks commenting on a public figure, “section 2(c) involves content-based discrimination that is not justified by either a compelling or substantial government interest.”[3] The question presented before the Supreme Court is “[w]hether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.”
Under the Supreme Court’s precedent in Matal v. Tam and Iancu v. Brunetti, the Federal Circuit’s decision was almost certainly correct.[4] Unlike the provisions at issue in those cases, which barred the registration of disparaging, immoral, and scandalous marks, section 1052(c) does not discriminate based on the viewpoint expressed; it bars registration of a famous person’s name whether the mark criticizes praises or is neutral about that person. But the provision does discriminate based on content, because it bars registration of marks based on their subject matter. The Supreme Court has held that “a speech regulation targeted at specific subject matter is content based even if it does not discriminate among viewpoints within that subject matter.”[5] Even though viewpoint discrimination “is a more blatant and egregious form of content discrimination,” both viewpoint discrimination and content-based discrimination are subject to strict scrutiny.[6] Even if we view trademarks as purely commercial speech – an issue the Supreme Court has never decided – laws burdening such speech are subject to at least the intermediate scrutiny of Central Hudson, which is the level of scrutiny the Federal Circuit applied in finding section 1052(c) unconstitutional as applied to TRUMP TOO SMALL.
To survive the Central Hudson test, section 1052(c) must advance a substantial government interest and be narrowly tailored to serve that interest.[7] The government argues that the provision advances a government interest in protecting the right of publicity of public figures from having their names used in trademarks without their consent. However, even if the government has a substantial interest in protecting the state right of publicity, the provision is not narrowly tailored to serve that interest. This is because every state’s right of publicity law incorporates some sort of defense to protect First Amendment interests,[8] and “recogniz[es] that the right of publicity cannot shield public figures from criticism.”[9] But the PTO takes no countervailing interests into account before denying registration to a mark under Section 1052(c). The PTO merely inquires into whether “the public would recognize and understand the mark as identifying a particular living individual” and whether the record contains the famous person’s consent to register the mark.[10] Accordingly, section 1052(c) is unconstitutionally overbroad because it burdens speech that the right of publicity would not burden. The provision is therefore far more extensive than necessary to serve the government’s purported interest and is facially unconstitutional.
A peculiar aspect of the Supreme Court’s First Amendment jurisprudence in the context of trademark registration is that a trademark registrant is not only asserting a right to free speech, but also to obtain an exclusionary right to prevent others from using the same speech in commerce (at least to the extent it would cause consumer confusion). In other words, if we are concerned with burdening Elster’s right to proclaim that Trump is too small, it is odd to remedy that concern by giving him a right to prevent others from saying the same thing. Section 1052(c) is not equipped to deal with this larger concern with marks containing political commentary because it only prevents the registration of marks by persons other than the named political figure, and only if they contain the name of that political figure. Outside of this narrow context, the Lanham Act can do great harm to free political speech because it allows for the federal registration of all manner of marks containing pollical commentary. Anyone can register a mark containing political commentary so long as it does not name the political figure without her consent. And politicians are free to register marks making political commentary whether or not they contain their own names. For example, the Trump Organization has a federal registration for the mark MAKE AMERICA GREAT AGAIN.[11] This grant of a federal registration does more harm to free speech than the denial of any registration would, because it allows the trademark holder to prevent others from making the same political comment in commerce to the extent it would result in a likelihood of confusion (or to the extent they are unwilling to incur the expense of defending against a federal lawsuit).
This raises a broader critique of the Supreme Court’s rigid approach to the First Amendment. The Court deals in inflexible categories of scrutiny that focus solely on the rights of the speaker (in these cases, the trademark registrant), without considering how the absolute protection of those rights might affect the speech rights of others. For example, in Boy Scouts of America v. Dale, the Court decided that the First Amendment rights of the Boy Scouts were violated by a New Jersey law requiring it to rehire a gay scoutmaster it had fired.[12] But the Court did not consider how the Boy Scouts’ assertion of their First Amendment rights affected the rights of the fired scoutmaster or of other New Jersey employees to publicly express their sexual orientation without fear of being fired. And in Citizens United, the Court vindicated the First Amendment rights of private corporations to support political candidates without considering how the resulting flood of corporate political propaganda could drown out the speech of less powerful private citizens.[13] The trademark registration cases put this issue in stark relief, because in protecting the rights of the trademark registrant to say scandalous, immoral, disparaging, or political things, the Court utterly fails to consider the ways in which the resulting rights of exclusion might prevent other people from saying the very same things. This was the point Justice Breyer made in his Brunetti concurrence, where he argued that “[t]he First Amendment is not the Tax Code.”[14] Rather than focusing on inflexible, outcome-determinative categories, he urged the Court to adopt a balancing test: “I would ask whether the regulation at issue works speech-related harm that is out of proportion to its justifications.”[15] Even under such a test, section 1052(c) would likely not survive, because it is far broader than its purported justification to protect the right of publicity. But such an approach would at least allow the Supreme Court to consider in these trademark registration cases that it is not only protecting a right to speak, but a right to exclude others from speaking.
Several prominent scholars have argued that the PTO could prevent the registration of political commentary marks under the “failure to function” doctrine.[16] The Lanham Act’s definition of a “trademark” requires that a trademark must be “used by a person to identify and distinguish that person’s goods from those of others and to indicate the source of the goods, even if that source is generally unknown.”[17] The argument is that political commentary marks are not perceived by the public as source indicators, but, rather, as political commentary. Under the failure to function doctrine, the PTO has denied registration to EVERYBODY VS RACISM and ONCE A MARINE, ALWAYS A MARINE.[18] Denying registration to political commentary marks under this doctrine might not violate the First Amendment because it is clearly a legitimate trademark policy to regulate interstate commerce. However, this issue is not before the Supreme Court in the Elster case because failure to function was not a basis for the denial of registration of TRUMP TOO SMALL in the PTO. In any event, the constitutionality of section 1052(c) cannot be saved by the failure to function doctrine because that has never been the government’s asserted justification for the provision, and because in that context too, the provision would be unconstitutionally overbroad insofar as it would bar the registration of marks containing the names of famous persons that do operate as source indicators.
While predicting the outcome of a Supreme Court case is always hazardous, it appears that if the Court is to follow its own First Amendment precedent, it must either declare section 1052(c) facially unconstitutional or formulate a test for the PTO to apply similar to the First Amendment defenses to the right of publicity, such that a substantial number of the statute’s applications do not violate free speech. (more…)
Under former director Iancu, the USPTO created a set of guidelines allowing the PTAB to deny IPR institution even in situations where the challenger raises strong challenges. These discretionary denials are known as Fintiv guidelines based upon the precedential case of Apple Inc. v. Fintiv, Inc., IPR2020-00019 (P.T.A.B. 2020). The statute appears to provide the USPTO Director with discretion in at least two key ways: (1) The statute does not expressly require institution but rather sets the reasonable-likelihood of success as a minimum threshold for granting institution. (2) The statute also indicates that the decision of whether to issue is non-appealable, suggesting a discretionary approach.
A group of five large companies led by Apple then sued the USPTO in the N.D. Cal. — arguing that the discretionary denials were in violation of the Administrative Procedure Act (APA). These five companies all regularly face patent infringement allegations and want a smoother path to invalidating the claims via IPR and PGR.
The district court dismissed the APA case and that was largely affirmed on appeal (although the Federal Circuit did ding the USPTO for failing to follow notice-and-comment procedure). See, Jordan Duenckel, IPRs and the APA: Review of Director’s Discretion to Initiate IPRs, Patently-O (March 15, 2023).
In a recent filing, the plaintiffs have indicated that they are planning to petition the Supreme Court to hear the case. The new filing is a request for extension of time until August to file the petition for writ of certiorari.
In the background, Dir Vidal has moved forward with her Advance Notice of Proposed Rulemaking (ANPRM) for potential PTAB reforms that place some limits on discretionary denials, but not to the extent Apple would like. The forthcoming brief is likely argue that the Federal Circuit’s ruling has led to the PTO signaling interest in adopting rules that would contradict the America Invents Act (AIA) and that fail to adequately address concerns.
The Supreme Court recently issued its pro-trademark-owner opinion Jack Daniel’s Properties, Inc. v. VIP Products LLC and unanimously vacated the Ninth Circuit favoring the accused comedic copycat. Justice Kagan delivered the opinion of the Court with concurring opinions from both Justice Sotomayor and Justice Gorsuch. The holding is that the First Amendment does not require any special scrutiny in cases where the accused activity is “the use of trademarks as trademarks.” Rather in this use-as-a-mark situation, standard principles of trademark law apply. The court offered the possibility (but did not decide) that a heightened situation could still apply in other situations such as use of another’s mark as artwork or for criticism, etc.
VIP’s dog toy resembles a Jack Daniel’s whiskey bottle, with several allegedly humorous alterations. Jack Daniel’s Properties, which owns the trademarks, demanded VIP stop selling the toy, leading to VIP seeking a declaratory judgment that their product neither infringed nor diluted Jack Daniel’s trademark rights. The District Court sided with the mark holder after concluding that VIP product used Jack Daniel’s features to identify the source of their own products. On appeal, the Ninth Circuit reversed, applying the Rogers test, which provides a heightened scrutiny in situations where a trademark is being wielded against “expressive elements” protectable under the First Amendment. See Rogers v. Grimaldi, 875 F. 2d 994 (2nd Cir. 1989). After a bit more procedure, the case eventually reached the Supreme Court on a question focusing on the Rogers test. The court attempted to issue a somewhat narrow holding:
Without deciding whether Rogers has merit in other contexts, we hold that it does not [require any threshold requirement] when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods.
Slip Op. Here, the court found that VIP’s use of the mark was as a source identifier. What this mean is that VIP does not have an extra special First Amendment excuse. However, standard trademark law already has some free speech outlet valves, such as the exception for parody. The Supreme Court remanded the case to the lower courts to consider whether VIP’s “effort to ridicule Jack Daniel’s” offer an excuse in the “standard trademark analysis.”
Trademark law includes a special cause of action for big players with “famous marks” under the doctrines of dilution and tarnishment. The trademark statute includes a fair-use exception, but it only applies in situations where the accused dilution/tarnishment is a use “other than as a designation of source.” This is a narrower exception that that available based upon judge-made law in traditional trademark infringement cases. And, the Supreme Court decided to stick with the statute — with the holding here that the VIP cannot claim fair use for the dilution/tarnishment because its use of the JD mark was as its own source identifier.
Critically, the [statutory] fair-use exclusion [for dilution] has its own exclusion: It does not apply when the use is “as a designation of source for the person’s own goods or services.” §1125(c)(3)(A). In that event, no parody, criticism, or commentary will rescue the alleged dilutor. It will be subject to liability regardless.
Id. This is a powerful boon to those already in power.
Justice Kagen’s opinion was for the unanimous court. However, 5 of the justices also signed one of the concurring opinions.
Justice Sotomayor, joined by Justice Alito, joined the majority opinion but wrote separately to emphasize the need for caution in the context of parodies and other uses implicating First Amendment concerns. She highlighted the potential risk in giving uncritical or undue weight to surveys in alleged trademark infringement cases involving parody. She argued that surveys should be understood as merely one piece of the multifaceted likelihood of confusion analysis and that courts should carefully assess the methodology and representativeness of surveys.
Justice Gorsuch, joined by Justices Thomas and Barrett, also joined with the majority opinion. Gorsuch wrote separately to underscore that lower courts should handle Rogers v. Grimaldi, with care. He noted that the Court’s decision leaves much about Rogers unaddressed, including where the Rogers test comes from and whether it is correct in all its particulars. He urged lower courts to be attuned to these unresolved issues.
Tune In Next Term for More on TM/Speech: The Supreme Court recently agreed to hear the case of In re Elster, which involves a California lawyer, Steve Elster, is seeking to trademark the phrase “Trump too small,” a reference to a taunt from Senator Rubio during the 2016 presidential campaign. Elster’s intent was to use the phrase on T-shirts to convey a message that he believed some aspects of President Trump (as well as his policies) were diminutive. However, the USPTO rejected the application, citing the prohibition on registering marks that identify a particular living individual without their written consent. The Federal Circuit ruled in favor of Elster — effectively following the Supreme Court’s prior cases of Tam and Brunetti and holding denial of registration as a free-speech violation. The Gov’t’s petition to the Supreme Court argued that Elster is different than Tam or Brunetti for a couple of important reasons: (1) the prohibition on registering another person’s name is an effective protection of competing rights of privacy / publicity held by the other person; and (2) the prohibition is viewpoint-neutral and therefore should be reviewed with less scrutiny.
In the recent case of In re Microsoft, 23-128 (Fed. Cir. 2023), the Federal Circuit once again granted a writ of mandamus, ordering a patent infringement case to be transferred out of Judge Albright’s courtroom in the Western District of Texas (WDTX). This decision was made under the provisions of 28 U.S.C. § 1404(a), which allows for the transfer of cases for the convenience of the parties and in the interest of justice.
Microsoft, a multinational corporation with a significant presence in many U.S. states, including Texas, is no stranger to litigation in the Lone Star state. The company’s substantial business activities in Texas, which include marketing, selling, and servicing the accused products, did not significantly impact the 1404(a) jurisprudence in this case.
In 2022, Virtru Corporation sued Microsoft for infringing three of its data privacy patents: US8589673, US8874902, and US9578021. Microsoft sought to transfer the case to the Western District of Washington (WDWA) under § 1404(a), citing its incorporation and headquarters in Washington, the location of the accused technology’s development, and the absence of relevant operations by either party in WDTX.
The Judge Albright denied the motion, concluding that while access to sources of proof and local interest slightly favored transfer, administrative difficulties due to court congestion disfavored it. The district court found 27 Microsoft employees in WDWA who were potential witnesses, but it deemed the willing witness factor neutral because Virtru had identified eight potential party witnesses more conveniently located near (but not in) WDTX.
In the § 1404(a) mandamus context, the appellate court reviews only for clear abuses of discretion that produce patently erroneous results. The decision of whether to transfer a case is committed to the district court’s discretion, but the district court should transfer when a movant demonstrates that the transferee forum is clearly more convenient.
The appellate panel concluded that Judge Albright’s denial of transfer was patently erroneous. It noted a clear abuse of discretion in the district court’s assessment of the convenience of potential witnesses. The appellate court concluded that the center of gravity of the action was clearly in the WDWA, where the majority of potential witnesses with relevant and material information resided, where accused product features were researched, designed, and developed, and where physical evidence was located. The court granted the petition, vacated the district court’s order denying transfer, and directed the district court to grant the transfer motion.
The pending petition in Nike v. Adidas asks the Supreme Court whether it is proper for the Patent Trial & Appeal Board (PTAB) to raise sua sponte new grounds of unpatentability against a substitute claim added during an inter partes review proceeding. The government, as a respondent in this case, argues that the PTAB can create its own reasons for rejecting newly-added claims so long as the patent owner is given sufficient notice and a chance to respond.
However, the case intrigue has recently heightened due to a somewhat chaotic saga involving the PTAB. Key figures involved include former PTAB Chief Judge Ruschke, current Chief Judge Boalick, and Judge Michael Fitzpatrick, who was recently justified as a wronged-whistleblower.
The Supreme Court petition was submitted amidst revelations of secretive maneuvers within the Board. These questionable practices include an abrupt panel expansions and judge replacement without notifying involved parties. Specifically, in the Nike v. Adidas IPR, the Board panel was first expanded to include Chief Judge Ruschke and then Deputy Chief Judge Boalick after all parties had finished their arguments and opinion writing had begun. The process also witnessed the replacement of Judge Fitzpatrick after he expressed discontent over the panel’s expansion, prompting his removal from all America Invents Act (AIA) cases.
Judge Fitzpatrick’s ousting ignited a legal battle against the USPTO, which recently concluded with a victory for Fitzpatrick at the Merit Systems Protection Board (MSPB). Fitzpatrick alleged that the USPTO had manipulated the inter partes review process in the Nike v. Adidas case, inappropriately expanding the PTAB review panel and delaying the final decision. Furthermore, Fitzpatrick’s whistleblowing disclosures extended beyond the PTAB, unearthing a misrepresentation by the Solicitor General to the Supreme Court regarding the frequency of expanded panels during the Oil States proceedings. In briefing in the case, the Solicitor General recently apologized to the Supreme Court, expressing regret for the unintended misinformation. The SG’s brief indicates that they only recently learned of the underlying drama.
In light of these troubling revelations, the Solicitor General suggests the Supreme Court grant, vacate, and remand Nike v. Adidas, offering the petitioner a chance to present arguments based on this new information to the Federal Circuit, and allowing the Federal Circuit to consider these points in the first instance.
Interestingly, this practice of unannounced judge replacements parallels the Federal Circuit’s tactics in the infamous Novartis case. Although the Adidas name is still on the case, the company has formally requested not to be involved in the appeal, citing a settlement reached with Nike.
Washington Post has published a long article titled, “Colleagues want a 95-year-old judge to retire. She’s suing them instead,” by Rachel Weiner. Judge Pauline Newman, the oldest active federal judge in the country, has been embroiled in controversy as she resists her colleagues attempts to urge/force her to retire. The article ends with a noteworthy quote from Newman that rings true to her characteristic resilience and dedication: “I want to spend my last five years correcting my colleagues’ mistakes.” In a career spanning four decades and more than 300 dissenting opinions, Newman’s resolve is clear.
My own quote in the Washington Post article outlines the complexity of the situation: “Moore’s order says other judges are concerned about Judge Newman’s health; I think that’s real.” I genuinely believe the concerns are rooted in care for Judge Newman, but the issue at hand extends beyond personal sentiments. As a former Naval engineer, Chief Judge Kimberly Moore is seeking to run a disciplined court.
Weiner reports the details of her in-person interview with Judge Newman in her Lafayette Square office overlooking the White House.
The article cites to my 2022 study of Federal Circuit decisions showing that Judge Newman is the most patentee-friendly judge, with Chief Judge Moore a close 2nd. Dennis Crouch, Judging Patent Cases, Patently-O (May 4, 2022).
(Editor’s note: (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. -Jason)
By: Jillian Grennan, Associate Professor of Finance and Principal, Diversity Pilots Initiative
Recently, I had the privilege of being part of the Junior Innovation Economics Conference at Harvard Business School. This diverse gathering of scholars from fields as varied as management, technology, economics, finance, and public policy delved headlong into the intricate dynamics of invention and innovation policy. Several researchers spoke about issues relevant for better understanding diversity and inclusion in the inventive process and how to improve it. These included: documenting gender disparities in attribution for innovative output, understanding how “opt-in” organizational processes can unlock the innovative potential of engineers from underrepresented groups, and measuring how broader representation can help bring more valuable innovations to market.
Britta Glennon, a researcher exploring the interaction between diversity and corporate strategy, shed new light on the well-documented fact that women publish and patent less than men. The reasons behind these gender disparities remain largely unknown. Could it be an unsupportive work environment, family obligations that take precedence, or simply less productive time use? Britta and her team propose a different angle: that women’s work is often undervalued; hence, female inventors are being deprived of rightful recognition.
Backed by terrific data collection, ranging from large-scale administrative data to surveys and qualitative responses, Britta made a compelling case that this alternative perspective merits our attention.
The evidence shows women are less frequently credited as authors on articles and patents, a pattern echoing historical instances like Rosalind Franklin’s unacknowledged work on the DNA structure and Jennifer Doudna’s worries about diminished recognition in the CRISPR development. It’s important to recognize that such biases might have inadvertently hidden countless female contributions over the years, possibly deterring many from pursuing a scientific career. In fact, the crux of this research is that women, across nearly all scientific fields and career stages, are significantly under-credited compared to their male counterparts, indicating an attribution bias. This discovery is especially important because it tells us that overcoming any female productivity deficit requires both the removal of barriers to accomplishment as well as proper attribution.
In that sense, Britta’s work on attribution related to my own research with Colleen Chien, examining engineers’ views on patenting. We discovered that while women are less likely to self-identify as inventors, both genders equally identify as problem-solvers. Could this imply traditional invention disclosure processes that require proactive inventor identification deter women? To probe this further, we implemented three pilot studies within firms, focusing on the impact of opt-out (default participation) vs. opt-in (active selection) systems on patenting disparities. Our findings suggest that, even when accounting for the inventive idea’s quality, altering the invention disclosure process to emphasize default participation can make a significant difference in participation rates for women and first-time inventors.
Another compelling presentation was delivered by Tamar Oostrom, who, alongside Jennifer Kao, is exploring innovation in healthcare markets. They reveal the glaring disparities between clinical trial enrollees and actual disease sufferers in terms of demographic characteristics. For instance, clinical trials for melanoma – a disease predominantly affecting older adults – often enroll much younger patients. By examining expansions in public insurance coverage for clinical trials, they demonstrate how reducing the financial frictions that inhibit enrollment leads to more representative enrollments in terms of age, race, and gender. More importantly, their work raises the question: Can more representative enrollments in clinical trials enhance drug effectiveness and medication adherence? If reducing the costs and hurdles associated with clinical trial enrollment can improve health outcomes, the case for expanding insurance coverage for such trials becomes stronger.
As the conference drew to a close, I was deeply inspired by my fellow scholars’ dedication and the important implications of our collective work. The key takeaways from this event for business and public policy are clear: We need to recognize and value women’s contributions to scientific innovation, ensure clinical trials are representative to avoid distorting health outcomes and consider opt-out mechanisms, where the default expectation is participation, to bridge the innovation gap for underrepresented groups.
The challenges tied to racial and gender equality in intellectual property development are substantial, but the insights from the conference reiterate the power of our collective effort to better understand the mechanisms at work and suggest how business and society can better gain from the innovative potential of everyone. I left feeling thankful for all the support that the other young scholars and I had received to make our own research possible.
The dialogue at the conference also affirmed that academic-practitioner collaborations work and hold great promise for the future. I encourage those who can to consider initiating their own diversity pilots – it’s a win-win situation. Researchers from the Diversity Pilots Initiative are happy to help you with this. We have expertise in econometric, observational, survey, and other empirical methods and are well-versed in topics from mentoring to inequality in innovation to government policy. And please stay tuned for further updates by emailing us and signing up for DPI research updates.
The second major new Senate patent bill focuses on reconstructing AIA trials — particularly by reducing availability and power of inter partes review and post grant proceedings. The bipartisan Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act was introduced by Senators Chris Coons (D-Del.),Thom Tillis (R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii).
