Explainer: How Gender and Racial Biases Mar the US Patent Process, and What Lawyers Can Do to Fight Back Features
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Explainer: How Gender and Racial Biases Mar the US Patent Process, and What Lawyers Can Do to Fight Back

JURIST Deputy Features Editor Jaimee Francis talked with Professor Jordana Goodman of Boston University School of Law about her research on gender and race equity issues in intellectual property. Below is a transcript of their conversation, which has been edited for clarity.

JURIST: Can you please give a brief overview of the patent system?

A patent gives its owner a monopoly on exclusion so that the owner can prevent other people from making this product or process described in their patent for about twenty years from the time that they disclose their invention. This process starts with one or more inventors creating something new: someone recognizes a problem, and they develop a solution. This solution doesn’t need to be fully developed in that the inventor doesn’t have to develop a prototype or build the machine. I like saying it’s like a Lego instruction book: you have to be able to tell someone else what pieces go in what order to make the final product so that somebody having ordinary skills in the art will read that instruction book and be able to know what they have to do to be able to make the results. Now, this invention can’t be obvious, and it has to be novel and new in light of all the existing publicly available information. Publicly available information includes information that might have been put out by the inventor at hand, which means the inventor can’t have publicly disclosed their invention more than a year before filing their patent application in the United States to get a patent. If an inventor meets this criterion, they might want to protect their invention with a patent. So sometimes inventors will try to file on their own, or sometimes they’ll go to a patent practitioner. If the inventor goes to a patent practitioner, the inventor will have to describe the invention to the practitioner. The explanation process generally first involves using an invention disclosure form, followed by some kind of conversation with the practitioner. The practitioner will then write up the patent application and send it to the client for review. The practitioner might also search to see whether there’s anything out there in the prior art that would prevent their client from getting a patent for the invention at hand. If the process moves forward, the practitioner will file the application with the United States Patent and Trademark Office (USPTO). Generally, it takes around a year or two to hear back from the patent office, unless the parties have accelerated the process. Once the patent office is ready, an examiner will review the application. Generally, the examiner is a specialist in the field of the invention. When the examiner reviews the application, they’re going to see whether it’s been written so that somebody of ordinary skill in the art can read this Lego book of instructions and make the Lego set. The examiner is also going to see whether a person having ordinary skills in the art would think that this is obvious in light of the prior art that we know already exists. Generally, after submitting a patent application, the examiner will issue a rejection saying this claim is not patentable for some reason. When that happens, it’s the job of the practitioner and the inventor to figure out a response. They have several options: they can sometimes have an interview with the examiner, they can decide to amend the claims and explain why the new claims are patentable, or they can decide to push back and say that the argument is wrong. In any case, the process goes back and forth between the USPTO and the patent practitioner until hopefully, they get a granted patent. However, if they get a rejection that they don’t respond to, then their application is abandoned, which means they did not get a patent.

JURIST: Can you please talk more about the ordinary-skill standard and its implications?

I think cultural capital is really interesting to think about. In the context of intellectual property, I think about it as somebody’s skills, knowledge, and education gained from their experiences to create something new, and then enable them to achieve a higher societal status. So creating something new is how an inventor has leveraged their cultural capital, and the inventor can then now increase their social status by pursuing a patent and making a business.

Cultural capital is relevant for the law because there are a lot of legal standards — such as in torts, the reasonable person standard; or in patent law, a person having ordinary skill in the art ­­— where we try to assess what an ordinary person would be and then we hold the parties accountable to this standard. When constructing this ordinary person, though, we don’t always take into account every type of cultural capital that a person has acquired over their lifetime. For example, when we look at a person who is inventing something in chemistry, we’re going to define a person having ordinary skills in the art as generally someone who has some exposure to chemistry. Sometimes the courts will even go so far as to say that they’re a researcher or that they have a certain degree in chemistry. And that’s the standard to evaluate all this other prior art — what already exists in the public space — to see whether this person having ordinary skill in the art would be exposed to this prior art. But when we’re looking at the subject matter, a lot of times we categorize this into academic subject matter — like chemistry, physics, mathematics, or mechanical engineering. And someone’s background — whether they’re a woman, a person of color, or from a religious background — is not always factored into whether or not something is obvious. And if we don’t factor in all those other sources of cultural capital, then when we judge an applicant against this fictional ordinary person, we are most likely defaulting to the cultural capital of the majority group. And this default might not be fair to inventors who are inventing from a space using their minority group’s cultural capital.

JURIST: Can you please further explain how this default affects those in a minority group?

It means that if you’ve invented something new using your minority group’s cultural capital, you now need to be able to explain this to somebody having ordinary skills in the art so that they can make and use their invention. If this person shares your minority group’s cultural capital, you might not need as many steps to get them to understand what’s going on. But if we have a default majority group, someone from a minority group’s cultural capital standpoint now has a greater chasm of communication to overcome. For example, let’s say there is a group of chemists and physicists and we decide that chemistry is close enough to physics so we implement a physicist standard. In that case, all the chemists would need to explain their inventions to a physicist standard in order to get a patent, whereas the physicists can use their own language and get a patent a lot easier. So this is one of the many struggles that people are going to face if they are not able to be judged with cultural capital that they derive outside of academia: if you’re inventing from a minority group’s cultural capital space, you likely need to provide more explanation and expend more resources in this communication to get the same value in your eventual patent that somebody else would get outside of that cultural space.

JURIST: Are there other examples of biases in the patent process other than the cultural capital component?

There are a lot of biases in general in the inventive process. I think that the number one thing that comes to mind is just funding. For example, if you look at venture capital funding in the U.S., only 2% of the funding goes to women and 1% to Black-owned businesses. That’s a big gap. Patents can cost anywhere from $5,000 to easily over $20,000. If you’re not getting funding, then you’re not able to pay the patent attorney to fight for this patent to get the best patent for your invention. This discrepancy in funding makes it harder for certain groups of people to get the same result as others.

JURIST: What are some solutions to remedying these biases in the patent system?

There are at least two different cultural capital deficiencies that I identify in the patent process. The first is the average cultural capital of the average patent practitioner and likely also the average patent examiner is not the same as that of the inventor. Patent practitioners will have cultural capital deficiencies that are difficult for them to overcome in practice. This deficiency is not something that they purposely acquired, but everybody acquires their own cultural capital. And sometimes a practitioner’s or examiner’s cultural capital can be helpful, like when the knowledge derived from their cultural capital overlaps with somebody else’s cultural knowledge. In that case, when both parties have specialized cultural knowledge, the subject matter doesn’t have to be explained in significant detail to bridge a cultural knowledge gap. For example, if I started talking to a recent law school graduate about some breach of contract, that graduate would have a lot more cultural knowledge about the topic of contract law having finished law school than they did before they started law school. And now the two of us can speak on a higher level about that issue. But if I wanted to talk about the breach of contract issue with someone who does not have a legal background, then I would first have to explain to them the basics of contracts before we really got into what it means to have a breach.

With patents, there’s always going to be something new for an inventor to describe to their patent attorney because their invention has some new component. But let’s take an example in the hair care space which relies on cultural capital generally derived outside of academia. I’m writing a paper about Black inventors in the hair care product space. For example, a Black inventor in the Black haircare space will probably have to explain to a patent practitioner — especially one unfamiliar with Afro-textured hair — that very curly hair is generally more fragile than a straighter hair, or that styling somebody’s hair in dreadlocks is a very lengthy process. In fact, the inventor probably has to explain to the practitioner that the Black haircare business is almost a $3 billion industry in the United States. Furthermore, the language that an inventor has acquired from their culture does not always match that of the practitioner so that when a Black inventor uses a certain word it might not mean the same thing to the attorney. This happened to the inventors of NuDred: they invented a hair sponge that creates hair twists for curly hair. However, their patent application was rejected at the USPTO in light of two bath sponges that serve completely different purposes, likely because the word “sponge” had different primary meanings to the inventors and the examiner and patent practitioner. So, where the inventor and the practitioner don’t have the same cultural language, it’s going to be a much lengthier conversation to effectively communicate the nuances of their product. That is, it is going to take much effort for the inventor to get someone from a different background to have enough cultural capital to understand their invention. So issues of cultural capital arise where the average patent attorney is not Black, and the average inventor in the Black haircare space is likely either Black or has acquired a lot of cultural capital regarding the Black haircare space.

The second issue is this systemic idea of a person having ordinary skills in the art being somebody who is judged on their educational background, mostly from an academic perspective. They’re not judged on other forms of education, like their lived experiences that may include what they learned by being a Black person or what they learned by being a woman in society, or what they learned by having a certain religion. For inventions that are derived from that type of non-conventional, non-academic education, there really isn’t a system to account for that. And without that, we have a system where the default is the majority group’s cultural capital. So, we have not only a communication issue between the attorney and the inventor, but even if their cultural capital knowledge overlaps, the practitioner especially needs to recognize that they need to write this patent application to explain the invention to a default majority group. The practitioner can’t just explain the invention so that the inventor understands it. They need to explain it to a person who likely doesn’t have a lot of cultural capital derived from this minority group’s cultural space. This is a systemic injustice that is happening to people inventing in non-majority group space. And this injustice includes not only inventions related to Black haircare, but also to certain patents related to religion or derived from a female experience. In fact, even though women are the majority of the population of the country, they’re not often thought of as an inventor and their inventions are also not treated equitably.

I think a really great solution to help remedy some of these issues comes from the American Bar Association (ABA). The ABA recently change standard 303, which outlines the curriculum for an ABA-accredited law school. This change says that law schools need to provide training and education to law students on bias, cross-cultural competency, and racism at the start of a program of legal education and at least once again before graduation. I think that this can include discussions of cultural humility where you’re making explicit the interaction between institutions and the individual, and the presence of systemic power imbalances. But I also think that this could include discussions of cultural capital, like what it means to come from a certain space and be educated in that space and to recognize gaps in cultural capital between individuals. We can talk about speech communities, like how people share language and linguistic norms and how those impact one’s experience and knowledge. Everybody is going to have different things that they’re good at, and that they really bring to the table based on their lived experiences. Not only do I think having these types of conversations would help fulfill the mission of standard 303, but I also hope that it would help students realize why diversity is so important in education. As lawyers, we shouldn’t just push for diversity based on moral reasons. Without diversity in the legal profession, we will continue to perpetuate something akin to a hermeneutical injustice. A hermeneutical injustice in patent law could be an injustice where a knower, like a client, knows something crucial to their invention, but they are not going to receive a patent that fully captures the value of their invention because somebody who’s trying to help patent the invention — like an attorney or the examiner — can’t bridge the communication gap between them and the client. So I’m hoping that more education on this issue will help students bridge this communication gap to make the legal system fairer. I don’t want an attorney to think that when they don’t have enough cultural capital, they can just get it all from their client, because that’s expensive and puts a burden on the client that we recognize is the fault of the legal system in general. The client is paying the attorney $200 to $800 an hour, and it’s not their fault that the system isn’t built for them. It’s not the client’s fault that less than 2% of all patent attorneys are Black and we haven’t trained attorneys to be able to bridge cultural capital gaps while we work to remedy underrepresentation in the legal field. They shouldn’t need to pay extra because the legal system is broken and biased against them.