“Promoting the participation of underrepresented classes in the pursuit of the U.S. patent bargainrequires a two-pronged approach. Quite simply, those two prongs are: 1) an inventor’s ability to pursue a patent, and 2) her right and ability to enforce her patent once received.”
In a letter provided last week to members of the National Council for Expanding American Innovation (NCEAI), Secretary of the U.S. Department of Commerce Gina Raimondo announced her role as Chair of the Council for Inclusive Innovation (CI2). I congratulate the Secretary for this extremely important role. Innovation should have no barriers, and both of these—a) innovation and b) the breaking down of unjust barriers—stand at the root of America’s success and identity. To aid the CI2 and all who create and execute innovation policy in our government, underrepresented inventors have an unresolved ask, and it involves breaking down a barrier identified by the very people who the CI2 and Congress desire to help. That ask is this: remedy the inventor’s second prong.
How We Got Here
First, a quick review. The CI2 is the rebranded name given to the NCEAI, a council said to have spawned out of a recommendation in the USPTO’s 2018 SUCCESS Act study and report delivered to Congress in October 2019. For those new to the Study of Underrepresented Classes Chasing Engineering and Science Success Act (“SUCCESS Act”), this bill was passed by Congress and signed into law by President Trump in 2018, and it required the USPTO Director to perform a study on patent diversity. Specifically, the study required identification of “the benefits of increasing the number of patents applied for and obtained by women, minorities, and veterans and small businesses owned by [them]” and “legislative recommendations for how to–(A) promote the participation of women, minorities, and veterans in entrepreneurship activities; and (B) increase the number of women, minorities, and veterans who apply for and obtain patents.” Following this study, the Director was to submit to Congress a report on the study. To help gather information from stakeholders during the study, the USPTO posted a request for comments from stakeholders and notice of public hearings.
The Inventor’s Second Prong
My wife and I spoke at the first hearing, which we followed up with written commentary that included seven specific legislative recommendations for the USPTO to deliver to Congress to increase participation in the U.S. patent system by underrepresented groups. Notwithstanding the specifics of those recommendations, it is imperative to understand the crux of what our testimony demanded—promoting the participation of underrepresented classes in the pursuit of the U.S. patent bargain requires a two-pronged approach. Quite simply, those two prongs are: 1) an inventor’s ability to pursue a patent, and 2) her right and ability to enforce her patent once received.
The most important part of that demand is to realize this: without the second prong—an inventor’s right and ability to enforce her patent upon issuance—pursing a patent in the first prong becomes moot. As it was raised in the SUCCESS Act hearings: “What good is a patent if you can’t defend it?” And this is not just my opinion, but the opinion of 79% of inventor-stakeholders who testified in the SUCCESS Act study—a number certain to near 100% for inventors knowledgeable of today’s post-grant risks.
The Report, Called Out
Now, I find it necessary to inform readers, our government leaders, and the CI2 members themselves, that something else was delivered to Congress following the USPTO’s delivery of the SUCCESS Act Report—a signed letter from a multitude of the SUCCESS Act underrepresented inventor-stakeholders stating that their testimony was excluded from that very report. Don’t shoot the messenger; my signature couldn’t land on that letter; I don’t qualify as a woman, minority, or veteran. However, per these very classes of inventors, identification labels have become irrelevant today in defining what it means to be an “underrepresented inventor”, as they declare that misguided policy has thrown out the baby with the bathwater and created a new class of underrepresented inventors that is not limited to women, minorities, and veterans. Instead, this underrepresented class includes all the independent inventors and small businesses.
Underrepresented Inventors Identified the Problem
So, in their letter to Congress, what exactly did their ignored testimony reveal? This: “An overwhelming majority of the inventors who testified identified difficulty with enforcing our patents, risk of PTAB invalidations, and efficient infringement as obstacles to participating in the patent system.” And what was Congress seeking from the USPTO in the SUCCESS Act report? This: “Legislative recommendations for how to increase the number of women, minorities, and veterans who apply for and obtain patents.”
And there you have it. To first solve a problem, one must know what the problem is, and here, the very underrepresented inventor-stakeholders that both Congress and the CI2 desire to help have identified that problem. Perhaps to the surprise of many, that first prong—an inventor’s ability to pursue a patent, i.e., “her access”—was not identified as the primary obstacle. Rather, what the inventors identified as the primary obstacle to their participation in the patent system was this: the inability to enforce and defend a patent once it is received—the second prong.
Good Intentions Are Not Enough
In the Secretary’s letter to the CI2, a spirited commitment is provided. Although some insight on the previous state of patent affairs can be found, that commitment unfortunately does not consider what the inventors identified as their obstacle. The letter reads:
It is my commitment to do all that I can to increase participation in the innovation ecosystem particularly among those who have felt excluded. We cannot risk losing the next Marian Croak, Lonnie Johnson, Margaret Wu, or Patricia Bath – all 2022 inductees into the National Inventors Hall of Fame – because of a lack of access to our innovation system. (emphasis added)
Make no mistake, I wholeheartedly agree that we should not leave any “lost Einstein” behind, as has been stated to Congress before. Fully unleashing America’s economic engine is key to its success. Furthermore, I do not wish to diminish the success of any of the inventors mentioned here. Indeed, their induction into the National Inventors Hall of Fame is something to celebrate.
But notice something here. Exactly when was the patent bargain pursued for each of the featured patents listed on these National Inventors Hall of Fame inductees’ pages—Croak’s, Johnson’s, Wu’s, and Bath’s? Each was pursued during the patent system of yesteryear, long before the repetitive trampling of the inventor’s second prong was witnessed by today’s inventors (e.g. by eBay (2006), Mayo/Alice (2012/2014), TC Heartland (2017), Oil States (2018), Arthrex (2021), the 2011 America Invents Act, etc.). Their current hesitation to participate stands justified.
A Call for Remedy
Therefore, if what the Secretary and CI2 Chair states is true—that we cannot risk losing the next Einsteins—then Congress must take heed of what today’s underrepresented inventors have identified and asked. In fact, in a recent Patent Diversity Hearing, witnesses even said that “there is nothing that independent inventors can do” when needing to enforce their patents against theft from larger companies, “outside to just coming to legislation”.
And remember, to pursue patent diversity, good intentions are not enough. Focusing only on “lack of access” (the first prong) does not address what these underrepresented inventors have identified as their obstacle. It is our responsibility to not just be zealous in the pursuit, but to be sure that our pursuit is the right pursuit, not merely in their ends, but in their means.
Underrepresented inventors have spoken—the right and ability to enforce her patent once received is the very reason an inventor pursues a patent in the first place, and that right and that ability has become broken for all inventors and small businesses.
Accordingly, and in the interest of patent diversity, I stand with all inventors and call on our government to remedy the inventor’s second prong.
The aforementioned inventor letter suggests one solution, and there may be others. But failing to swiftly provide sufficient remedy to what inventors have identified as a barrier to their participation in the patent system would leave their critical voice missing yet again. Until such remedy is provided, these inventors are being prevented from reaching their full potential and from their future hall of fame greatness, a risk we cannot take.