USPTO Council on Expanding Innovation Gets Mixed Reactions

By Eileen McDermott
September 18, 2020

“The class they claim to want to help is grossly underrepresented on this new council. Only a handful of the 29 members are inventors or small business owners. This is par for the course, as our leaders have jettisoned the democratic merit-based patent system which ACTUALLY encouraged diverse and broad participation in patenting.” – Josh Malone, Inventor

https://depositphotos.com/147998477/stock-photo-empathetic-emoji-reactions-on-computer.htmlThe U.S. Patent and Trademark Office (USPTO) earlier this week announced the creation of the National Council for Expanding American Innovation (NCEAI), an initiative ostensibly intended to “build a more diverse and inclusive innovation ecosystem by encouraging participation demographically, geographically, and economically.” Reactions to the Council were mixed, with a number of IPWatchdog sources contacting us to alternately express their confusion, skepticism or support. We put out a call for official reactions to share these varying responses, which raise a number of questions to be monitored as the NCEAI moves forward.

Robert GreenspoonRobert Greenspoon, Partner, Flachsbart & Greenspoon, LLC

If the NCEAI rises above the status of a “showcase of names,” it has potential for success to increase social mobility and reduce income inequality.

The NCEAI might seem like a room full of white guys meeting over coffee and pastries to debate inclusion of minorities and women. But the structure of the Council shows signs of being something much better. First, the Council is designed to be visible, accountable and high profile. If even a small quorum of its members become energetic and dedicated to its goals, the Council as a whole has great pull to motivate teams of people to get things done. Second, the Council encourages public feedback and input, thus will operate as a clearinghouse for ideas that can come from anywhere (not just the conference room pastry table). Finally, the Council will appropriately expand its vision beyond just patenting to innovation and entrepreneurship as a whole. Patenting is a means to an end (entrepreneurial success), not the end itself.

The elephant in the room is that the federal government faces strong legal barriers against overtly favoring a minority or interest group over the general public. Thus, don’t expect to see recommendations to water down standards for patentability for targeted groups. What I would like to see is deployment of USPTO staff to the nation’s middle schools (I’m looking at you, [administrative patent judges] APJs) to educate the public about positive outcomes from innovation and patenting. The side benefit—APJs will have to teach why patents are important. Yes, kids will get why they should want a tool that lawfully allows supra-competitive pricing and easier startup financing. Let Lincoln’s words echo through the nation’s public schools, that patenting adds “the fuel of interest to the fire of genius in the discovery and production of new and useful things.”

Jeff Hardin, Business Owner and Independent Inventor

Although I appreciate the intent behind the creation of this council to increase patent participation by underrepresented groups, what about the actual concerns and recommendations provided by underrepresented inventors in the SUCCESS Act study? 

The overwhelming majority of individuals commenting in this study stated not that participation barriers in the patent system reside in the initial pursuit, but that post-grant risks negate the resulting patent, namely, difficulty enforcing patents, PTAB invalidation, and efficient infringement. “What good is a patent if one cannot defend it?” one minority woman succinctly put it.

PPAC asked the USPTO about these risks facing patent seekers, and the USPTO affirmed the SUCCESS Act Report would address it. However, the Report has been called into question by the inventor community, saying it failed to do so. Moreover, the U.S. House Committee on Small Business possesses a letter from SUCCESS Act witnesses saying their voices were ignored. Another complaint might very well be a lack of actual representation of underrepresented and economically-challenged inventors on the NCEAI, reminding me of the “missing critical voice” recently mentioned by John Whealan to the House.

I support equal opportunity in the patent pursuit, such as this council sets out to do, but my testimony specifies that to increase patent participation of underrepresented classes, the ability to defend a patent must come first; otherwise, knowledgeable inventors will continue regarding the patent pursuit as a mere payment to the government to share their inventions with the world, only to have those inventions stolen by efficient infringers.

The creation of this council codifies the SUCCESS Act Report, but inventors who testified call the legitimacy of this report into question. If inventors regard this council as a continued indifference and underrepresentation by the government, their distrust in the patent system will only increase.

Lissi Mojica, Managing Director, Answers IP

As a member of one of the “underrepresented” groups, I am very enthusiastic about this council.  The only way to change the landscape is to provide opportunities to the underrepresented groups. Particularly in STEM careers. As a 20-year veteran of the USPTO, I know they have been striving to achieve diversity with many different approaches. This is a long-haul approach; however, it is the most effective approach in achieving long term success. Let’s hope that the folks assigned to the council reflect the community they are trying help. Kudos to the USPTO!

Josh Malone, Inventor of Bunch O Balloons and Volunteer with US Inventor

The class they claim to want to help is grossly underrepresented on this new council. Only a handful of the 29 members are inventors or small business owners. This is par for the course, as our leaders have jettisoned the democratic merit-based patent system which ACTUALLY encouraged diverse and broad participation in patenting. As inventors have been deprived of meaningful ability to enforce our patents in court or defend them from the PTAB, the patent system has evolved to serve large corporations, lawyers, and bureaucrats. Inventors are weary of being tricked and patronized by out-of-touch elites. Perhaps we will launch our own council.

Jonathan Stroud, Chief IP Counsel, Unified Patents, LLC

This is a phenomenal effort and initiative from the USPTO leadership.  Intellectual property is a driver of wealth and innovation in this country, and for too long it has disproportionately benefitted incumbents and excluded many diverse Americans—whether intentionally or otherwise—from this essential part of our innovation economy.  The LEAP program, the USPTO’s progressive hiring policies, and now the NCEAI, inch us all closer to a future where we all benefit from the American dream, regardless of creed, class, color, gender, sexual orientation, or religion.  More needs to be done in the profession—particularly at firms at the partnership level—but we’re making strides as a bar, and this is an important step forward.

 

Image Source: Deposit Photos
Photography ID:147998477
Copyright:rozelt 

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 7 Comments comments. Join the discussion.

  1. Pro Se September 18, 2020 6:34 pm

    I was just looking at the Unified Patents IPR filed against me, an independent African American inventor, as I prepared it for a NPL for a Reissue I filed, that cost me $3,100 because I have licensees in the portfolio, the law says I pay full price.

    The USPTO can save the feel-good narrative.

  2. Warren Tuttle September 19, 2020 7:39 am

    I have been asked to be on the NCEAI Council and am very excited about participating. I am, and will continue to be fully engaged. It’s a mission that I believe in. I also serve on the 501c3 non-profit Patent Pro Bono Advisory Council, which has similar aims. After reading this article and associated comments, here are a few brief observations:
    1.) First, it’s quite simply a terrific and timely initiative.
    2.) The council, though filled with many accomplished Industry CEO’s and University Presidents, is hardy made up of “white guys”. It’s actually a diverse group individually and I have been impressed so far with their personal credentials and passion.
    3.) Though the council members may be the face of the effort, many support folks (40-50 at least) have been tapped to participate in working groups behind the scenes and doing a lot of the hard, detail work. This is also a diverse and enthusiastic group. Besides the council meetings, I have chosen to sit on all three break-out panels, which focus on the creation and implementation of innovation.
    4.) The companies represented on the council all appear to be ones with significant, traditional IP interests (3M, Qualcom, IBM, etc).
    5.) I am very committed to representing the independent inventor community. I have already spoken up many times at several meetings, and also behind the scenes, about issues and conditions on the ground that specially concern us. I will continue to do so. Please reach out to me via listed email, phone or otherwise (website) if you have any thoughts, suggestions or questions. I will be pleased to fill you in on whatever I know.
    6.) I sensed remarks from a few of the other independents at the inaugural meeting reflected an understanding of current inventor issues and challenges. More specifically, that access to our national innovation ecosystem and consumer marketplaces must be fully available and universal, which not all self-interested, market dominant, companies necessarily believe in today, if the future of innovation in America is to run efficiently on all cylinders.

  3. mike September 19, 2020 12:14 pm

    @Warren
    Like Jeff commented in the article, knowledgeable inventors know there is no point in seeking patent protection for their innovations today unless they can protect it, and their SUCCESS Act testimony points out that the PTAB makes patents a liability.

    In your quest to ensure that “access to our national innovation ecosystem” is “fully available and universal”, are you dedicated in working on inventors having fully available and universal access to an Article III court and a trial by jury?

  4. Warren Tuttle September 19, 2020 1:07 pm

    In response to Mike’s question: I am not a fan of the current PTAB set up for many reasons, but in particular where an issued patent that comes back for review is no longer considered valid. I believe that was an essential poison bill put in the Congressional AIA bill that is difficult for the USPTO to get around. I am in favor of full access to the courts, where at least an issued patent is accepted as valid. I was also a supporter (and participant in DC based discussions) many years ago of Robert Greenspoon’s Patent Small Claims Court concept, which was experimented with in England. Please email me at wwtuttle@yahoo.com and I will provide a link, if you would like to participate, in a special UIA virtual session that we have put together with several PTAB judges for September 29th, including the chief judge and four others, and open to our national inventor club leadership community to keep the numbers and discussion manageable.

  5. mike September 19, 2020 4:19 pm

    @Warren. Thank you for your advocacy. Yoy said “… the Congressional AIA bill that is difficult for the USPTO to get around.”

    It’s not that difficult. The USPTO has admitted that they actively engage with staffers on Capitol Hill, and the Director on Government Affairs and Oversight not only has two decades of working on the Hill, he worked on the SUCCESS Act when on the Hill. Now at the USPTO, he is responsible for facilitating policy proposals related to IP issues. This is one of those issues. It’s time to garner support and change the law, and, if the USPTO already admits they will violate separation of powers and work directly with Congress, it’s time for the Director on Government Affairs and Oversight to address the PTAB concerns brought up by the vast majority of SUCCESS Act witnesses. It is appauling that the SUCCESS Act report did not provide any legislative recommendation on correcting the PTAB, especially since he worked on the bill.

    Also, it’s time to stop meeting with PTAB “judges”, which only serves to validate their appointment. They were unconstitutionally appointed.

    Also, it’s time to stop referring to the “chief judge” of the PTAB as such. Recall that in the Oil States oral argument when the DOJ Deputy Solicitor General referred to the “chief judge of the PTAB”, Chief Justice Roberts quipped “You’re talking about the executive employee? … When we say ‘judge’, we usually mean something else.” Exactly.

    It’s time to relegate those APJs to engineering school so they can gain some skills in the art before opining on the art.

  6. Warren Tuttle September 20, 2020 8:51 am

    Thanks for your thoughts Mike.
    The purpose of this unique PTAB session is to directly voice inventor community concerns to the PTAB judges themselves (I use the term judges simply because it’s how they are described by the USPTO)…concerns they in their world often do not hear about, or in some cases aren’t even aware of. This is is a follow up session to one we held in person last year at the USPTO and served as an opportunity to get us directly in front of them. If nothing else, the event opened some folks up to viewpoints they may have never considered and allowed us to present many discouraging observations and challenge some of their numbers. The fact of matter is the PTAB currently exists, whether it should or not, or won’t some day day in the future, so let’s use this as one avenue (of many) to directly communicate valid concerns and opposition.
    Re: the USPTO’s hands being tied: I was attempting to refer specifically to the cleverly inserted (and purposefully buried) validity poison pill (sorry, meant pill way above and not bill, I’ll blame that on spell check 😉 They have no choice in this specific matter, which is a central problem.
    As to relations between the USPTO and the Hill, and what influence they may have there, the fact of the matter is the core rules must be changed on the Hill. Right or wrong, given all of the other national challenges and tumult going on these days, the PTAB is a back burner issue for both Congress and the vast majority of American people…not to mention lobbying efforts from Well organized and powerful entities on the other side. I believe Director Iancu recognizes this and is doing what he can incrementally to level the playing field. It’s also why we must all do what is within our ability to address, not simply in macro theory but in micro actionable ways. I’d be happy to have a phone conversation with you, or a group some day, to further discuss, I am always open to learning new things and sharing insights.

  7. Anon September 20, 2020 9:37 am

    , if the USPTO already admits they will violate separation of powers and work directly with Congress

    Not seeing the violation, mike,

    It is literally the job of the USPTO to attempt to shape patent policy.

    Literally.

    You need more than merely engaging with Congress to support your assertion that there has been a violation of Separation of Powers. That term has a very real and distinct meaning, and I do not think that you are using that term correctly in this instance.

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