Senate IP Subcommittee Hearing on Improving Patent System Inclusivity Centers on Better Communication About Available Resources

By Steve Brachmann
April 27, 2021

“[A]lthough the USPTO has ample educational programming and disseminates information about resources through various channels, part of the issue is ensuring that this information finds its intended audience.”

Senator Marsha Blackburn (R-TN)

On the morning of Wednesday, April 21, the Senate Judiciary Committee’s Subcommittee on Intellectual Property held a hearing titled Improving Access and Inclusivity in the Patent System: Unleashing America’s Economic Engine. The discussion included panelists who represent many of the groups that are underrepresented in the U.S. patent system, with the intention of helping to inform both Congress and the U.S. Patent and Trademark Office (USPTO) on steps that can be taken to improve outreach to inventors from underrepresented groups and increase awareness of useful agency resources for prospective patent applicants.

Efforts to improve inclusivity within the U.S. patent system have taken on a new urgency in recent years. In February 2019, the USPTO released a report on women inventors (as directed by the SUCCESS Act), which showed that only 21% of U.S. patents granted between 1976 and 2016 listed a woman inventor. Both houses of Congress are also currently looking at passing the Inventor Diversity for Economic Advancement (IDEA) Act into law.

As members of the Senate IP Subcommittee leadership noted during opening remarks, there is evidence of great economic impact that can come through improving inventor diversity. This includes research by Michigan State’s Lisa Cook and Claremont Graduate University’s Yanyan Yang showing that inclusion of more women and African Americans in earlier stages of the innovation process could improve U.S. gross domestic product by as much as 4.6%. Senator Mazie Hirono (D-HI) noted in her opening remarks that many products we take for granted today, like the windshield wiper and home security systems, as well as major medical breakthroughs currently being developed, like CRISPR gene editing, involve important contributions from women and minority inventors Mary Anderson, Marie Van Brittan Brown and Jennifer Doudna.

High Hurdles

Leading off remarks for the witness panel was Georgia Grace Edwards, co-founder of the women’s activewear firm SheFly, which sells athletic pants with patent-pending zipper technology for easier urination while outdoors. She indicated that patents were central to SheFly’s business model, helping to signal legitimacy, establish a revenue stream and get a positive valuation from investors. Edwards discussed three specific barriers that SheFly has faced on the road toward getting a patent, including a lack of female representation in the entrepreneurial networks she used to build SheFly, a lack of insider knowledge of how to navigate the patenting process, and the costs of legal fees for filing patent applications, on which Edwards said SheFly has spent about half its revenue“The reality is that women and people of color are innovating, but many do not take the next step to patent because they face a variety of barriers,” said Angela Grayson, Founder and Principal Member of Precipice IP PLLC and Chair of AIPLA’s Diversity in IP Law Committee. Referencing testimony given during the 2019 Lost Einstein hearings held by the Senate and House IP Subcommittees, Grayson indicated that it was interesting to hear that inventors from underrepresented communities felt that there weren’t many resources available to help them, citing the availability of the Patent Pro Bono program and regular educational programming at the USPTO, as well as entrepreneurial resources made available through the Small Business Administration as well as the Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) grant funding programs.

Mallun Yen, Founder and Partner of the Operator Collective, discussed how women in executive IP roles with major tech corporations were so rare when she worked at Cisco in 2005 that she and six other women chief patent counsels, including Google’s Michelle Lee, who would go on to serve as Director of the USPTO during the Obama Administration, founded the ChIPs Network. ChIPs is now the largest organization for women in patent law with 4,000 members in 17 chapters around the world. Through Operator Collective, Yen has worked to build a community of operators, including investors and executive personnel with experience scaling up companies after their founding, among underrepresented communities including women and people of color. “Most people aren’t trying to exclude these operators, it’s just that the system was not built for people who give 150% to their day job and use any time left over for their families,” Yen said. In her testimony, Yen advocated for greater outreach to underrepresented communities as well as more accessibility to USPTO resources, ideally by increasing the agency’s number of satellite offices as well as amending eligibility requirements for the Patent Pro Bono to better serve those from groups with traditionally low rates of patenting.

Talent Gone to Waste

Referencing NASA’s Apollo 13 crisis in 1970 and that agency’s dogged pursuit of solutions to bring its astronauts home, Lateef Mtima of the Howard University School of Law noted that the U.S. government has long understood the need to capitalize on ideas coming from the great diversity of the nation’s citizens. “Unfortunately, such has not always been the case for our patent system or our IP ecosystem as a whole,” Mtima said, “To paraphrase blues great Robert Cray, ‘like food left out all night, it’s talent gone to waste.” Among his proposals for improving inclusivity in the U.S. patent system included a national grassroots program for IP outreach to underrepresented communities, a pre-prosecution patentability assessment pilot program for low-income inventors to better target promising patent applications with limited resources, and a study on ways to better incorporate STEM and IP topics into the K-12 student curricula across the nation.

One of the hearing’s continuing themes was the difficulty faced by inventors from underrepresented communities in gaining a basic grasp of intellectual property or how to obtain patent rights. Edwards, who called SheFly’s experience with the patent prosecution process “long, clunky, opaque, and bureaucratic – and that’s my kindly worded, highly edited description of the process,” said that she never learned much about IP while growing up in the Appalachian region of Western Maryland until attending the Middlebury Entrepreneurs program, where she built SheFly, and even then she was unaware of resources like the Patent Pro Bono program that could have provided financial relief.

The Need for Grass Roots Outreach

This lack of awareness of available resources was echoed by many attendees at the hearing. Senator Marsha Blackburn (R-TN) noted that she had recently had conversations with a pair of entrepreneurs from minority backgrounds in which she asked those individuals if they had considered patenting. “Their immediate response to me was, ‘Well, no, but how would I do that? Who would I go talk to?” Blackburn said. “The challenge is not knowing how to navigate this system.” As Grayson noted, although the USPTO has ample educational programming and disseminates information about resources through various channels, including email listservs, part of the issue is ensuring that this information finds its intended audience.

In advocating for ways to break this informational barrier, Mtima focused on the importance of building programs at the grassroots level to break through fears and uncertainties related to interacting with government agencies and lawyers that may be groundless but are nonetheless felt by many in communities underrepresented within the U.S. patent system. “Nobody likes to go to the dentist, and it doesn’t make it even better if the dentist offers to make a house call,” Mtima said. When bringing information to underrepresented communities through local outreach programs, Mtima indicated it was important to structure that information in a way that doesn’t intimidate people. Yen echoed this intimidation factor in discussing eligibility for the Patent Pro Bono program, which includes a knowledge requirement to either have a provisional patent application on file at the USPTO or complete an online certificate training course. “There are some requirements that when you read them sound a bit daunting, but when I clicked through it and actually took the course… it’s actually not as daunting as it sounds like,” Yen said.

The Author

Steve Brachmann

Steve Brachmann is a freelance journalist located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He writes about technology and innovation. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients and is available for research projects and freelance work.

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 8 Comments comments. Join the discussion.

  1. Anon April 27, 2021 3:41 pm

    Five words:

    Wasting time on virtue signaling.

    Four words:

    Fiddling while Rome burns.

    Three words:

    Fix Eligibility Now.

    Two words:

    Jurisdiction Stripping.

    One word:

    Promote.

  2. Josh Malone April 27, 2021 3:57 pm

    If Shefly spent half their revenue on getting a patent, where will they get $450,000 for the PTAB? They spent half their revenue on a wall decoration! It is unconscionable how Congress and the USPTO are tricking entrepreneurs into giving up their precious capital for phony patents.

  3. an examiner April 28, 2021 9:45 am

    This is a good step forward! The PTO does have many resources and training materials/courses available. I worked on detail with one of the regional outreach programs at the PTO – they are more than willing to come talk to just about any group (schools, bar associations, chamber of commerce, etc.). You just have to reach out and request a visit. The people working outreach are regional USPTO leadership, SPEs, and Primary Examiners.

    I personally have talked to people in my own sphere of influence, and have two friend-of-a-friends who have both been accepted into a pro bono program and are in the process of having their applications drafted. The requirements (income limits, number of people each year, etc.) differ for each pro bono program, depending on where you are in the country and their own standards they set. I have friends on the attorney side that volunteer 50-150 hours a year on pro bono projects through USPTO “affiliates,” and they love the work and are highly qualified attorneys at recognized firms.

    Yes, this would be an excellent first step to gauge interest in the patenting process by various underrepresented groups. And personally, if it meant the USPTO expanded its outreach teams, I would love that, because it is much more engaging and fulfilling than just examining all the time 🙂

  4. Pro Say April 28, 2021 10:52 am

    Dear Congress,

    If you’re really and truly serious about unleashing America’s economic engine, simply do this:

    Put on your big boys and girls pants . . . step up to the plate . . . and reclaim and take back your Constitutional patenting authority from the Supreme Court and Federal Circuit . . . and restore patent eligibility to all areas of innovation.

    All areas.

    If you don’t, America’s economic engine will continue to cough and sputter.

    While you continue to allow Big Tech to repeatedly and continuously whisper their troll tales into your ears, some the most important computer and medical diagnostic breakthroughs the World has ever seen . . . are coming soon . . . from China.

    Courtesy of the U.S. Congress.

  5. TFCFM April 28, 2021 11:14 am

    Article: “Edwards discussed three specific barriers that SheFly has faced on the road toward getting a patent, including
    – a lack of female representation in the entrepreneurial networks she used to build SheFly,
    – a lack of insider knowledge of how to navigate the patenting process, and
    – the costs of legal fees for filing patent applications…

    Pray tell how
    – ‘not enough ovaries in her network’
    inhibited Ms. Edwards obtaining a patent?

    While we’re at it, how are
    – ‘not enough insider information’ and
    – ‘patent fees/costs’
    different for inventors with ovaries (or “wrong”-colored skin) than they are for all other inventors?

  6. Night Writer April 29, 2021 11:02 am

    @5 TFCFM

    Yes this is just ridiculous. Hire a patent attorney and all that “insider” knowledge suddenly becomes available to you.

    It seems the rule is if female/POC is under represented, then it is because of bias, and if female/POC is over represented, then it is due to merit.

  7. Erfinder April 30, 2021 4:38 pm

    It is “patently obvious”, that the PTO should pay for all expenses involved in defending a patent THAT THEY PROSECUTED, ALLOWED, AND ISSUED!
    It is also “patently obvious” that the examiners that prosecuted and allowed the patent (with years of experience in the art), should be included in its defense (i.e.,the charade) at PTAB!

  8. Anon May 3, 2021 12:00 pm

    Erfinder,

    To add a little “legal substance” to your post (and noting the absolute silence of a particular patent blogger who likes to use his ‘real name’ – but not engage on the merits), that person likes to stress that the notion of personal property is not ‘diminished’ by that property being a legal term of art, “Public Franchise” — but without the concomitant necessity of clarifying what duties to the FranchisEE the FranchisOR owes.

    If the Supreme Court wants to ‘invoke’ the notion that the Patent Rights can be hauled back into the Executive Branch Administrative Agency confines, then there is a corresponding necessary duty that must attach.

    That person however, has no interest in actually discussing the full ramifications.

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