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USPTO Has Ways to Improve Patent Diversity and Inclusion

Oct. 13, 2021, 8:01 AM

A significant lack of diversity in terms of inventor demographics exists in the U.S. patent system.

To better assess this, the Senate re-introduced the Inventor Diversity for Economic Advancement (IDEA) Act in March to require the U.S. Patent and Trademark Office (USPTO) to collect voluntarily provided information on “gender, race, military or veteran status, and any other demographic category that the Director determines appropriate, related to each inventor listed with an application for patent.”

While the IDEA Act may illuminate the extent of inventor diversity, or lack thereof, what steps can be taken to encourage diversity of innovation?

Identifying the Patent Inequity Gap

There is little reliable data on inventor demographics, but predictions suggest that some groups are being left out. For example, a 2020 USPTO report revealed a gender gap showing that only 12.8% of all inventor-patentees are women.

The racial gap appeared even more profound, with a 2018 report estimating that Black and Hispanic individuals each represent only 1% of all inventors. Other minority groups, such as the LGBTQ community, seem to have no inventorship data at all.

The IDEA Act aims to not only measure this inequity, but also inform policy to encourage more diverse individuals to pursue and obtain patents.

Such encouragement might include increased access to financial and educational resources, programs to connect diverse innovators with patent practitioners, and/or mechanisms for lowering patent costs and fees for minority inventors, which could be realized under the recently introduced Unleashing American Innovators Act that aims to create an outreach program for underrepresented patent applicants. Yet the true impact of any new policies and programs remains to be seen.

Ways to Encourage Diversity of Inventorship and Invention

Diversifying American inventorship could bring significant economic benefits by stimulating the development and commercialization of more innovative ideas drawn from experience across the socioeconomic spectrum, as well as social benefits by promoting a more inclusive society.

One way to encourage diverse inventorship could be to grant special status, such as reduced application fees and/or accelerated examination, to patent applications that name inventors from underrepresented demographics.

Because accurate inventorship is necessary for a patent to be enforceable, applicants (e.g., corporations) should be wary of trying to game the system by naming a minority inventor solely to obtain special status. Similar benefits are already available in the USPTO based on economic status as “micro entities” (e.g., certain inventors who have a limited gross annual income) enjoy a 75% reduction on most application fees.

Hence, a similar discount might be expanded to other demographic categories.

Diversifying inventorship could also motivate the hiring of diverse individuals in an effort to inspire more diverse products, including innovations designed to benefit underrepresented populations.

There is some USPTO precedent for this as well—the Cancer Immunotherapy Pilot Program provides fast-track examination (without any additional fees) for applications related to methods of treating cancer, thus giving an advantage to inventions aimed at a narrow population.

A similar advantage could be afforded to inventions designed to benefit other minority groups—e.g., a hair care appliance for use with afro curly hair, or a dual-gender doll for teaching children about transgender identity. Patent applications for both such inventions were filed in recent years, but without any special status due to their subject matter.

As with the Cancer Immunotherapy program, the claims in such minority-benefiting applications would likely need to be limited to the intended population to gain the program’s benefits. This would pose a trade-off for the applicant: pursue a broad patent to protect the invention for use with anyone at the cost and timing of regular examination, or pursue a narrower population-specific patent more quickly and/or at lower cost.

Make Patent Examination More Flexible

Once examination begins, it may be difficult to convince the USPTO that a diverse invention is non-obvious (and thus patentable) due to its unique applicability to a minority population.

In general, the patent laws are blind to the intended use of a claimed product. Accordingly, patent examination of diverse inventions may need to become more flexible, while still relying on existing legal principles. For example, arguments regarding the special purpose of an invention might be presented as “secondary considerations,” which have been characterized as highly probative of non-obviousness and include evidence that, for example, the invention satisfies a “long-felt need” that was recognized, persistent, and not solved by others.

Obviousness rejections also commonly assert that features of prior inventions can be combined to achieve the claimed invention. But a diverse applicant might argue that it is not obvious to create an inclusive product by combining features from less inclusive products.

Consider, for example, early facial recognition technology that inaccurately detected faces of people of color, virtual classroom applications that lacked transcription tools for deaf students, or a “real name” algorithm that mistakenly flagged Native American names as fake. In each case, the earlier technology did not achieve the desired purpose of inclusivity.

Looking Ahead

Beyond the foregoing issues, many other arguments and questions are likely to arise as the U.S. patent system seeks to improve diversity and inclusion.

For instance, those opposing such efforts may argue that granting special status to diverse inventors could lower the patentability threshold and overall patent quality, or that such efforts will perpetuate separation rather than inclusion of minorities, or that companies will drive up costs for products designed for minority groups due to a perceived limited demand.

Regardless, the patent system has room for improvement to encourage diversity among inventors and their ideas. The IDEA Act is a promising start, but there will likely be much debate before we see any real changes to law or policy.

This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.

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Author Information

Dianna G. El Hioum is a partner at the law firm Fox Rothschild LLP and chair of the firm’s Intellectual Property Department. Based in the firm’s New York office, she centers her practice on global patent prosecution and portfolio development, licensing, due diligence, and opinion work.

Gregory Logan (Ph.D.), is a patent agent at Fox Rothschild LLP based in the firm’s Pittsburgh office. His experience includes more than a decade of work in laboratories doing research on breast cancer, neuroscience, stem cells, and basic cell biology.

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