Published November 11, 2021
Title: Diversity and Inclusion in Patent Law
Feature Article by Caroline Funk, PhD, Associate Director, The Baldy Center for Law and Social Policy
Keywords: diversity and inclusion, racial bias, gender bias, patent law, government reform, social justice and social change.
Associate Professor of Law Amy Semet believes that academic research should evaluate and comment on how government is working. Our government is meant to change and to adapt, but this can happen only if courts and agencies are open to input from scholars. Much of her research focuses on intellectual property law, and in particular, patent law. A functional and equitable patent law process is critical to our economic development, with any system balancing stable property rights and innovation.
The administration of patent law is ostensibly simple: an inventor – a potential patentee – develops something novel and nonobvious from inventions in the prior art. The inventor files for a patent and the United States Patent and Trademark Office (USPTO) determines the validity of their claim. If a patent is granted, it confers on the patent holder the right to exclude others from practicing the claimed invention. Disputes in patent litigation usually focus on infringement, with alleged infringers often contesting the validity of the patent as a defense. Infringement cases are litigated in the federal courts. In addition, petitioners can also contest the validity of a patent before the Patent Trial and Appeal Board (PTAB), which is a federal adjudicatory body.
The Patent Trial and Appeal Board (PTAB) conducts trials, including inter partes, post-grant, and covered business method patent reviews and derivation proceedings, hears appeals from adverse examiner decisions in patent applications and reexamination proceedings, and renders decisions in interferences.
Semet’s work relates directly to all of the complex or simple things around you that are protected by patents: everything from the dynamic programming in your smart devices to the design of your phone case can be patented. Unless we are inventors ourselves, we probably do not think enough about how this works, why some things are patented and some are not, who benefits from patents, and who is cut out of the process unfairly – and how that happens. Semet is thinking about these things, and she is working to empirically identify factors that impact the process.
In Semet's opinion, patent law is one area where empirics can yield insights into how institutions and policies can be reformed. In her 2019 Boston College Law Review article, Semet studied empirically how district court judges make decisions in patent cases, analyzing whether certain judges participating in a pilot program of specialized judges were less likely to be reversed on appeal. Her recent research, funded in part by The Baldy Center, continues looking at how federal courts and the PTAB make decisions in patent law cases. Semet has created databases of decisions by the federal court and the PTAB. She hopes to explore the factors animating how judges make decisions. In the past, she has considered variables including the technology of the claimed invention, the procedural posture of the case (such as whether it was being heard by a jury or on a motion), how complex the case and the patented technology was, the demographics of the judge (such as whether they had specialized expertise), the parties involved in the case (such as whether one or more of the parties was a non-practicing entity) as well as other factors (such as the year, the location of the court, and other factors).
Now, Semet is expanding her research to include variables such as gender and race to learn how they can impact decisions. Historically, the USPTO has not kept records of the gender and race of each patentee, and this has impacted research since there was little way to properly analyze the role that gender and race play in the patent system. The USPTO, however, recently created a database classifying the gender of the inventors of patents using statistics which Semet hopes to use in her own research. Using new name search techniques, the USPTO was able to attempt to classify the gender of the patentees historically, even though these data were not gathered when the applicants filled out their applications years ago.
Gender and racial bias can creep into the process of intellectual property and patent law. Women and people of color are underrepresented in most STEM fields, the federal judiciary, and among patent law and intellectual property lawyers. Because of the lack of availability of the data on gender and race, there have been few empirical studies of the impact that they play in intellectual property law. The USPTO’s new database, combined with Semet’s own collection of data of federal court and PTAB decisions, can be used to study many of these issues for the first time.
As a mechanism that protects new ideas and investments in innovation and creativity, the United States Patent and Trademark Office (USPTO) is at the cutting edge of the nation's technological progress and achievement.
The goal of Semet’s work is, again, reform. She believes that the goal any patent reform is to increase certainty and efficiency in patent law as well as to encourage innovation. Her expanded research includes the possibility for reforms that specifically address a bias free, equal and just patent system for women and underrepresented minorities and for innovators more generally.
Analyzing reform of the patent system is all the more important given that this year marks the ten year anniversary of the American Invents Act (AIA). Among other reforms, the AIA reformed the administrative machinery of the patent adjudicatory system, creating the PTAB as an alternative to district court litigation on some aspects of patent law. Controversy has swirled about the PTAB since its existence, with the Supreme Court making several decisions in the last few years concerning its constitutionality and practices. Analyzing how the PTAB works, as well as how its decisions compare with those of the federal courts, is important for understanding how to reform patent law going forward.
Amy Semet is Associate Professor of Law at the University at Buffalo School of Law. She teaches civil procedure, property, intellectual property law and patent law, and is affiliated with the University’s Department of Political Science. Semet focuses her research on empirical studies of legal institutions in intellectual property law, particularly patent law. She uses databases she has created of administrative agency and court decisions in intellectual property law, immigration law, labor law, and environmental law to better understand how agencies and courts make decisions. Her research allows her to suggest reforms to these institutions.