Wednesday, July 17, 2019

Pushback on Decreasing Patent Quality Narrative

It's been a while since I've posted, as I've taken on Vice Dean duties at my law school that have kept me busy. I hope to blog more regularly as I get my legs under me. But I did see a paper worth posting mid-summer.

Wasserman & Frakes have published several papers showing that as examiners gain more seniority, their time spent examining patents decreases and their allowances come more quickly. They (and many others) have taken this to mean a decrease in patent quality.

Charles A. W. deGrazia (University of London, USPTO), Nicholas A. Pairolero (USPTO), and Mike H. M. Teodorescu (Boston College Management, Harvard Business) have released a draft that pushes back on this narrative. The draft is available on SSRN, and the abstract is below:

Prior research argues that USPTO first-action allowance rates increase with examiner seniority and experience, suggesting lower patent quality. However, we show that the increased use of examiner's amendments account for this prior empirical finding. Further, the mechanism reduces patent pendency by up to fifty percent while having no impact on patent quality, and therefore likely benefits innovators and firms. Our analysis suggests that the policy prescriptions in the literature regarding modifying examiner time allocations should be reconsidered. In particular, rather than re-configuring time allocations for every examination promotion level, researchers and stakeholders should focus on the variation in outcomes between junior and senior examiners and on increasing training for examiner's amendment use as a solution for patent grant delay.
In short, they hypothesize (and then empirically show with 4.6 million applications) that as seniority increases, the likelihood of examiner amendments goes up, and it goes up on the first office action. They measure how different the amended claims are, and they use measures of patent scope to show that the amended applications are no broader than those that junior examiners take longer to prosecute.

Their conclusion is that to the extent seniority leads to a time crunch through heavier loads, it is handled by more efficient claim amendment through the examiner amendment procedures, and quality is not reduced.

As with all new studies like this one, it will take time to parse out the methodology and hear critiques. I, for one, am glad to hear of rising use of examiner amendments, as I long ago suggested that as a way to improve patent clarity.

Monday, July 8, 2019

Jacob Victor: Should Royalty Rates in Compulsory Licensing of Music Be Set Below the Market Price?

Jacob Victor has a remarkable new article on copyright compulsory licenses, forthcoming in the Stanford Law Review. The article boldly wades into the notoriously convoluted history of the compulsory license option for obtaining rights to copyrighted music, and makes what I think is a very interesting and important normative argument about how compulsory license rates should be set.  Other scholars who have written on compulsory licensing, whose work Victor addresses, include, to name only a few: Kristelia GarciaJane C. Ginsburg, Wendy GordonLydia Pallas Loren, Robert P. Merges, Pam SamuelsonTim Wu, and more herein.

Tuesday, June 18, 2019

Freilich & Ouellette: USPTO should require prophetic examples to be clearly labeled to avoid confusion

Professor Janet Freilich (Fordham Law) has a fantastic forthcoming law review article, Prophetic Patents, which puts a spotlight on the common practice of submitting patent applications containing entirely hypothetical experimental results. These "prophetic examples" are permitted as long as the predicted results are not in the past tense. Using this tense rule, Freilich analyzed over two million U.S. patents in chemistry and biology, and she estimates that 17% of examples in these patents are prophetic. Prophetic examples may be familiar to patent drafters, but scientists and engineers who learn about them generally describe them as bizarre, and even some patent scholars are unfamiliar with the practice. Prophetic Patents was the one article by a lawyer selected for the 2018 NBER Summer Institute on Innovation, and the economist-heavy audience was fascinated by the concept—many were not even aware that researchers can obtain a patent without actually implementing an invention, much less that patents can contain hypothetical data.

Freilich notes the potential benefits of allowing untested ideas to be patented in terms of encouraging earlier disclosure and helping firms acquire financing, though she finds that patents with prophetic examples are not broader (based on claim word count), filed earlier (based on AIA implementation), or more likely to be filed by small entities. I'm very sympathetic to the argument that the current legal standard may allow speculative ideas to be patented too early—I've argued in prior work that all the competing policy considerations raised by Pierson v. Post about the optimal timing of property rights suggest that many patents are currently awarded prematurely. This is a challenging empirical question, however, because we cannot observe the counterfactual innovation ecosystem operating under a different legal standard.

But while pondering the hard question of the timing of patentability, patent scholars should not lose sight of the easy question: even if patenting untested inventions is socially desirable, there is no reason these patents need to be confusing. To me, Freilich's most interesting empirical result is her study of how often prophetic patents are mis-cited in scientific publications. She looked at 100 randomly selected patents with only prophetic examples that were cited in a scientific article or book for a specific proposition, and she found that 99 were not cited in a way that made clear they were prophetic. Instead, they were cited with phrases such as "[d]ehydration reaction in gas phase has been carried out over solid acid catalysts" (emphasis added). And it is not surprising that scientist readers are misled: many prophetic examples do confusingly mimic actual experiments, with specific numerical results. In prior work, I have shown that contrary to the assertions of some patent scholars, a substantial number of scientists do look to the patent literature to learn new technical information. So it is concerning that a large number of patents are written in a way that can be confusing to readers unfamiliar with the tense rule.

Freilich and I teamed up on a new project for which we interviewed patent drafters to explore whether prophetic examples have any important benefits for patentees that could not be obtained through less misleading methods of constructive reduction to practice. In Science Fiction: Fictitious Experiments in Patents—just published in last week's Science—we explain that the answer is no. Patent prosecutors who rarely use prophetic examples argued that there is no legal reason to use fictitious experiments with specific results rather than more general predictions. Those who usually use prophetic examples agreed that more explicit labeling would not affect the patents' legal strength. The only benefit to patentees that would be reduced by requiring greater clarity seems to be any benefit that comes from confusion, which does not seem worth preserving.

The USPTO already requires prophetic examples to be labeled by tense. But the tense rule is unfamiliar to many readers (including scientists and investors), and the distinction in tenses may be literally lost in translation in foreign patent offices. (For example, the form of Chinese verbs does not change with tense.) There is no good justification for not having a more explicit label, such as "hypothetical experiment." As Freilich and I conclude: "Just because some patents are not based on actual results does not mean they need to be confusing. Scientists regularly write grant applications in a way that makes clear what preliminary data they have already acquired and what the expected goal of the proposed project is. Perhaps this is an area in which the patent system could learn from the scientific community."

Monday, May 20, 2019

Inevitable Disclosure Injunctions Under the DTSA: Much Ado About § 1836(b)(3)(A)(i)(1)(I)

When trade secret law was federalized in 2016, some commentators and legislators expressed concern that federalization of trade secret law would make so-called "inevitable disclosure" injunctions against departing employees a federal remedy, and negatively impact employee mobility on a national scale.

In response to such concerns, the Defend Trade Secrets Act (DTSA) included a provision that is ostensibly designed to limit availability of inevitable disclosure injunctions under the DTSA. The limiting provision is codified in 18 U.S.C. 1836(b)(3)(A)(i)(1)(I), discussed further below.

The DTSA has been in effect for just over three years. My preliminary observation is that courts do not appear to view Section 1836(b)(3)(A)(i)(1)(I) as placing novel limitations on employment injunctions in trade secret cases. They also do not seem to be wary of "inevitable disclosure" language.

Friday, May 17, 2019

Likelihood of Confusion: Is 15% The Magic Number?

David Bernstein, Partner at Debevoise & Plimpton, gave an interesting presentation yesterday at NYU Law Engelberg Center's "Proving IP" Conference on the origins of the "fifteen percent benchmark" in trademark likelihood of confusion analysis. (The subject of the panel was "Proving Consumer Perception: What are the best ways to test what consumers and users perceive about a work and how it is being positioned in the market?")

In trademark law, infringement occurs if defendant’s use of plaintiff’s trademark is likely to cause confusion as to the source of defendant’s product or as to sponsorship or affiliation. Courts across circuits often frame the question as whether an "appreciable number" of ordinarily prudent purchasers are likely to be confused. But evidence of actual confusion is not required. There is not supposed to be a magic number. Courts are supposed to assess a variety of factors, including the similarity of the marks and the markets in which they are used, along with evidence of actual confusion, if any, in order to asses whether confusion is likely, at some point, to occur.

In theory.

But in practice, Bernstein asserted, there is a magic number: it's around fifteen percent. Courts will often state that a survey finding 15% or more is sufficient to support likelihood of confusion, while under 15% suggests no likelihood of confusion. See, e.g., 1-800 CONTACTS, INC. v. Lens. com, Inc., 722 F. 3d 1229, 1248-49 (10th Cir. 2013) (discussing survey findings on the low end).

Tuesday, May 14, 2019

The Stanford NPE Litigation Database

I've been busy with grading and end of year activities, which has limited blogging time. I did want to drop a brief note that the Stanford NPE Litigation Database appears to be live now and fully populated with 11 years of data from 2007-2017. They've been working on this database for a long while. It provides limited but important data: Case name and number, district, filing date, patent numbers, plaintiff, defendants, and plaintiff type. The database also includes a link to Lex Machina's data if you have access.

The plaintiff type, especially, is something not available anywhere else, and is the key value of the database (hence the name). There are surely some quibbles about how some are coded (I know of one where I disagree), but on the whole, the coding is much more useful than the "highly active" plaintiff designations in other databases.

I think this database is also useful as a check on other services, as it is hand coded and may correct errors in patent numbers, etc., that I've periodically found. I see the value as threefold:

  1. As a supplement to other data, adding plaintiff type
  2. As a quick, free guide to which patents were litigated in each case, or which cases involved a particular patent, etc.
  3. As a bulk data source showing trends in location, patent counts, etc., useful in its own right.

The database is here: Kudos to Shawn Miller for all his hard work on this, and to Mark Lemley for having the vision to create it and get it funded and completed.

Friday, May 3, 2019

Fromer: Machines as Keepers of Trade Secrets

I really enjoyed Jeanne Fromer's new article, Machines as the New Oompa-Loompas: Trade Secrecy, the Cloud, Machine Learning, and Automation, forthcoming in the N.Y.U. Law Review and available on SSRN. I think Professor Fromer has an important insight that more use of machines in businesses, including but not limited to increasing automation (i.e. using machines as the source of labor rather than humans), has made it easier for companies to preserve the trade secrecy of their information. Secrecy is not only more technologically possible, Fromer argues, but the chances that information will spill out of the firm are reduced, since human employees are less likely to leave and transfer the information to competitors, either illegally in the form of trade secret misappropriation or legally in the form of unprotectable "general knowledge, skill, and experience."

Professor Fromer's main take-home is that we should be a little worried about this situation, especially when seen in light of Fromer's prior work on the crucial disclosure function of patents. Whereas patents (in theory at least) put useful information into the public domain through the disclosures collected in patent specifications, trade secret law does the opposite, providing potentially indefinite protection for information kept in secret. Fromer's insight about growing use of machines as alternatives to humans provides a new reason to worry about the impact of trade secrecy, which does not require disclosure and potentially lasts forever, for follow-on innovation and competition.

Here was what I see as a key passage:
In addition to the myriad of potential societal consequences that a shift toward automation would have on human happiness, subsistence, and inequality, automation that replaces a substantial amount of employment also turns more business knowledge into an impenetrable secret. How so? While a human can leave the employ of one business to take up employment at a competitor, a machine performing this employee’s task would never do so. Such machines would remain indefinitely at a business’s disposal, keeping all their knowledge self-contained within the business’s walls. Increasing automation thereby makes secrecy more robust than ever before. Whereas departing employees can legally take their elevated general knowledge and skill to new jobs, a key path by which knowledge spills across an industry, machines automating employees’ tasks will never take their general knowledge and skill elsewhere to competitors. Thus, by decreasing the number of employees that might carry their general knowledge and skill to new jobs and in any event the amount of knowledge and skill that each employee might have to take, increasing automation undermines a critical limitation on trade secrecy protection.

For more on trade secret law's "general knowledge, skill, and experience" status quo, see my new article, The General Knowledge, Skill, and Experience Paradox. I recently discussed this work on Brian Frye's legal scholarship podcast, Ipse Dixit  in an episode entitled "Camilla Hrdy on Trade Secrets and Their Discontents".

Wednesday, May 1, 2019

Measuring Patent Thickets

Measuring the effect of patenting on industry R&D is an age old pursuit in innovation economics. It's hard. The latest interesting attempt comes from Greg Day (Georgia Business) and Michael Schuster (OK State, but soon to be Georgia Business). They look at more than one million patents to determine that large portfolios tend to crowd out startups. I'm totally with them on that. As I wrote extensively during troll hysteria, patent portfolios and assertion by active companies can be harmful to innovation.

The question is how much, and what to do about it. Day and Schuster argue in their paper that the issue is patent thickets, as their abstract shows. The draft article Patent Inequality, is on SSRN:
Using an original dataset of over 1,000,000 patents and empirical methods, we find that the patent system perpetuates inequalities between powerful and upstart firms. When faced with growing numbers of patents in a field, upstart inventors reduce research and development expenditures, while those already holding many patents increase their innovation efforts. This phenomenon affords entrenched firms disproportionate opportunities to innovate as well as utilize the resulting patents to create barriers to entry (e.g., licensing costs or potential litigation).
A hallmark of this type of behavior is securing large patent holdings to create competitive advantages associated with the size of the portfolio, regardless of the value of the underlying patents. Indeed, this strategy relies on quantity, not quality. Using a variety of models, we first find evidence that this strategy is commonplace in innovative markets. Our analysis then determines that innovation suffers when firms amass many low-value patents to exclude upstart inventors. From these results, we not only provide answers to a contentious debate about the effects of strategic patenting, but also suggest remedial policies to foster competition and innovation.
The article uses portfolio sizes and maintenance renewals to find correlations with investment. They find, unsurprisingly, that the more patents there are in portfolios in an industry, the lower the R&D investment. However, the causal takeaways from this seem to me to be ambiguous. It could be the patent thickets that cause that limitation, or it could simply be that industries dominated by large players are less competitive and drive out startups. There are plenty of (non-patent) theorists that would predict such outcomes.

They also find that firms with large portfolios are more likely to renew their patents, holding other indicia of patent quality (and firm assets) equal. Even if we assume that their indicia of patent quality are complete (they use forward cites, number of inventors, and number of claims), the effect they find is really, really small. For the one reported industry - biology, the effect is something like a -0.00000982 percent likelihood of lapse for each additional patent. This is statistically significant, I assume, because of the very large sample size and a relatively small variation. But it seems barely economically significant. If you multiply it out, it means that each patent is 1% more likely to lapse for every 1,000 patents in the portfolio (that is, from 50% chance of lapse, to 49% chance of lapse. For IBM - the largest patentee of the time with about 25,000 patents during the relative time period, it's still only a 25% change. Most patentees, even with portfolios, would be nowhere near that. I'm just not sure what we can read into those numbers - certainly not the broad policy prescriptions suggested in the paper, in my view.

That said, this paper provides a lot of useful information about what drives portfolio patenting, as well as a comprehensive look at what drives maintenance rates. I would have liked to see litigation data mixed in, as that will certainly affect renewals one way or the other, but even as is, this paper is an interesting read.

Tuesday, April 23, 2019

How Does Patent Eligibility Affect Investment?

David Taylor (SMU) was interested in how patent eligibility decisions at the Supreme Court affected venture investment decisions, so he thought he would ask. He put together an ambitious survey of 14,000 investors at 3000 firms, and obtained some grant money to provide incentives. As a result, he got responses from 475 people at 422 firms. The response rate by individual is really low, but by firm it's 12% - not too bad. He performs some analysis of non-responders, and while there's a bit of an oversample on IT and on early funding, it appears to be somewhat representative.

The result is a draft on SSRN and forthcoming in Cardozo L. Rev. called Patent Eligibility and Investment. Here is the abstract:
Have the Supreme Court’s recent patent eligibility cases changed the behavior of venture capital and private equity investment firms, and if so how? This Article provides empirical data about investors’ answers to those important questions. Analyzing responses to a survey of 475 investors at firms investing in various industries and at various stages of funding, this Article explores how the Court’s recent cases have influenced these firms’ decisions to invest in companies developing technology. The survey results reveal investors’ overwhelming belief that patent eligibility is an important consideration in investment decisionmaking, and that reduced patent eligibility makes it less likely their firms will invest in companies developing technology. According to investors, however, the impact differs between industries. For example, investors predominantly indicated no impact or only slightly decreased investments in the software and Internet industry, but somewhat or strongly decreased investments in the biotechnology, medical device, and pharmaceutical industries. The data and these findings (as well as others described in the Article) provide critical insight, enabling evidence-based evaluation of competing arguments in the ongoing debate about the need for congressional intervention in the law of patent eligibility. And, in particular, they indicate reform is most crucial to ensure continued robust investment in the development of life science technologies.
The survey has some interesting results. Most interesting to me was that fewer than 40% of respondents were aware of any of the key eligibility decisions, though they may have been vaguely aware of reduced ability to patent. More on this in a minute.

There are several findings on the importance of patents, and these are consistent with the rest of the literature - that patents are important for investment decisions, but not first on the list (or second or third). Further, the survey finds that firms would invest less in areas where there are fewer patents - but this is much more pronounced for biotech and pharma than it is for IT. This, too, seems to comport with anecdotal evidence.

But I've always been skeptical of surveys that ask what people would do - stated preferences are different than revealed preferences. The best way to measure revealed preferences would be through some sort of empirical look at the numbers, for example a differences-in-differences approach before and after these cases (though having 60% of the people say they haven't heard of them would certainly affect whether the case constitutes a "shock" - a requirement of such a study).

Another way, which this survey attempts, is to ask not what investors would do but rather ask what they have done. This amounts to the most interesting part of the survey - investors who know about the key court opinions say they have moved out of biotech and pharma, and into IT. So much for Alice destroying IT investment, as some claim (though we might still see a shift in the type of projects and/or the type of protection - such as trade secrets). But more interesting to me was that there was also a similar shift among those folks who claimed not to know much about patent eligibility or think it had anything to do with their investment. In other words, even for that group who didn't actively blame the Supreme Court, they were shifting investments out of biotech and pharma and into IT.

You can, of course, come up with other explanations - perhaps biotech is just less valuable now for other reasons. But this survey is an important first step in teasing out those issues.

There are a lot more questions on the survey and some interesting answers. It's a relatively quick and useful read.

Thursday, April 18, 2019

Beebe and Fromer: Study on the Arbitrariness of 2(a) Immoral or Scandalous Refusals

For those who have not had the pleasure of seeing it, I recommend the fascinating and, honestly, fun, new study by Barton Beebe and Jeanne Fromer on the arbitrariness and unpredictability of the U.S. Patent & Trademark Office's refusals of trademarks that are deemed to be "immoral" or "scandalous."

The study, entitled Immoral or Scandalous Marks: An Empirical Analysis, has been posted on SSRN. This paper served as the basis for Professors Beebe and Fromer's amicus brief in Iancu v. Brunetti.

This study follows up on Megan Carpenter and Mary Garner's prior 2015 paper, published in the Cardozo Arts & Entertainment Law Journal and Anne Gilson LaLonde and Jerome Gilson's 2011 article, Trademarks Laid Bare: Marks That May Be Scandalous or Immoral.  

All of these studies come to similar conclusions: there are serious inconsistencies in trademark examiners' application of the Section 2(a) "immoral-or-scandalous" rejection. The Beebe/Fromer study is technically 161 pages long, but it's mostly exhibits, and it's very accessible  – worth at least a read to see some of the examples they give, and to oggle at the bizarre interplay between Section 2(a) "immoral-or-scandalous" refusals and Section 2(d) "likely to confuse with prior registered mark" refusals.

Thursday, April 11, 2019

What was the "promise of the patent doctrine"?

What was the "promise of the patent doctrine"?  The short answer is: a controversial doctrine that originated in English law and that, until recently, was applied in Canadian patent law to invalidate patents that made a material false promise about the utility of the invention. A common example would be a claim to therapeutic efficacy in a specification that is not born out.

Warning: the content of this doctrine this may seem bizarre to those familiar with U.S. patent law.

Tuesday, April 9, 2019

Making Sense of Unequal Returns to Copyright

Typically, describing an article as polarizing refers to two different groups having very different views of an article. But I read an article this week that had a polarizing effect within myself. Indeed, it took me so long to get my thoughts together, I couldn't even get a post up last week. That article is Glynn Lunney's draft Copyright's L Curve Problem, which is now on SSRN. The article is a study of user distribution on the video game platform Steam, and the results are really interesting.

The part that has me torn is the takeaway. I agree with Prof. Lunney's view that copyright need not be extended, and that current protection (especially duration) is overkill for what is needed in the industry. I disagree with his view that you could probably dial back copyright protection all the way with little welfare loss. And I'm scratching my head over whether the data in his paper actually supports one argument or the other. Here's the abstract:
No one ever argues for copyright on the grounds that superstar artists and authors need more money, but what if that is all, or mostly all, that copyright does? This article presents newly available data on the distribution of players across the PC videogame market. This data reveals an L-shaped distribution of demand. A relative handful of games are extremely popular. The vast majority are not. In the face of an L curve, copyright overpays superstars, but does very little for the average author and for works at the margins of profitability. This makes copyright difficult to justify on either efficiency or fairness grounds. To remedy this, I propose two approaches. First, we should incorporate cost recoupment into the fourth fair use factor. Once a work has recouped its costs, any further use, whether for follow-on creativity or mere duplication, would be fair and non-infringing. Through such an interpretation of fair use, copyright would ensure every socially valuable work a reasonable opportunity to recoup its costs without lavishing socially costly excess incentives on the most popular. Second and alternatively, Congress can make copyright short, narrow, and relatively ineffective at preventing unauthorized copying. If we refuse to use fair use or other doctrines to tailor copyright’s protection on a work-by-work basis and insist that copyright provide generally uniform protection, then efficiency and fairness both require that that uniform protection be far shorter, much narrower, and generally less effective than it presently is.
The paper is really an extension of Prof. Lunney's book, Copyright's Excess, which is a good read even if you disagree with it. As Chris Sprigman's JOTWELL review noted, you either buy in to his methodology or you don't. I discuss below why I'm a bit troubled.

Saturday, April 6, 2019

PatCon9 at University of Kansas

Yesterday and today, the University of Kansas School of Law hosted the ninth annual Patent Conference—PatCon9—largely organized by Andrew Torrance. Schedule and participants are here. For those who missed it, here's a recap of my live Tweets from the conference. (For those who receive Written Description posts by email: This will look much better—with pictures and parent tweets—if you visit the website version.)

Tuesday, April 2, 2019

Why do I blog?

Friday and Saturday I'll be at PatCon9 at the University of Kansas School of Law. I'll discuss a scholarly work-in-progress with Janet Freilich, and I've also been invited to serve on a panel on "Roles and Influence of Patent Blogs" (with Kevin Noonan from Patent Docs and Jason Rantanen from Patently-O, and Written Description's own Camilla Hrdy serving as moderator). So I thought this would be a good opportunity to reflect on why I've written over 300 blog posts throughout the past eight years. (For those who want to read some highlights, note that many individual words below link to separate posts.)

I started Written Description in February 2011 when I was a 3L at Yale and was winding down my work as a Yale Law Journal Articles Editor, which had been a great opportunity to read a lot of IP scholarship. I noted that there were already many blogs reporting on the latest patent news (like Patently-O and Patent Docs), but that it was "much harder to find information about recent academic scholarship about patent law or broader IP theory." The only similar blog I knew of was Jotwell, but it had only two patent-related posts in 2010. (In 2015, I was invited to join Jotwell as a contributing editor, for which I write one post every spring.) Written Description has grown to include guest posts and other blog authors—currently Camilla Hrdy (since 2013) and Michael Risch (since 2015).

Most of my posts have featured scholarship related to IP and innovation. Some posts simply summarize an article's core argument, but my favorite posts have attempted to situate an article (or articles) in the literature and discuss its implications and limitations. I also love using my blog to highlight the work of young scholars, particularly those not yet in faculty positions. And I enjoyed putting together my Classic Patent Scholarship project; inspired by Mike Madison's work on "lost classics" of IP scholarship, I invited scholars to share pre-2000 words that they thought young IP scholars should be aware of.

Some posts have focused on how scholarship can inform recent news related to IP. For example, I recently posted about the role of public funding in pharmaceutical research. And I have drawn connections between scholarship and Supreme Court patent cases such as Impression v. Lexmark, Cuozzo v. Lee, Halo v. Pulse, Teva v. Sandoz, FTC v. Actavis, Bowman v. Monsanto, and Microsoft v. i4i. My compilation of Supreme Court patent cases has been cited in some academic articles, and my post on Justice Scalia's IP legacy led to some interesting discussions. I have also reflected on patent law scholarship more generally, such as on how patent law criteria apply to evaluating legal scholarship, what experience is needed to write good scholarship, choosing among academic IP conferences, transitioning from science to patent law, and why IP isn't on the bar exam.

I sometimes debate whether blogging is still worth my time. I could instead just post links to recent scholarship on Twitter, or I could stop posting about new scholarship altogether. But a number of people who aren't on Twitter—including from all three branches of the federal government—have told me that they love receiving Written Description in their email or RSS feed. Condensing patent scholarship seems like a valuable service even for these non-academic readers alone. And the pressure to keep writing new posts keeps me engaged with the recent literature in a way that I think makes me a better scholar. I don't think blogging is a substitute for scholarship, or that it will be anytime soon. Rather, I view my blogging time as similar to the time I spend attending conferences or commenting on other scholars' papers over email—one of many ways of serving and participating in an intellectual community.

I still have a lot of questions about the role of law-related blogs today, and I hope we'll discuss some of them on Thursday. For example: Has the role of blogs shifted with the rise of Twitter? Should blog authors have any obligation to study or follow journalism ethics and standards? How do blog authors think about concerns of bias? For many patent policy issues, the empirical evidence base isn't strong enough to support strong policy recommendations—do blog authors have any obligation to raise counterarguments and conflicting evidence for any decisions or academic papers they are highlighting? What are the different financial models for blogs, and how might they conflict with other blogging goals? (This may be similar to the conflicts traditional media sources face: e.g. clickbait to drive readership can come at the cost of more responsible reporting.) Do the ethical norms of blog authorship differ from those of scholars? How should blogs consider issues of diversity and inclusion when making choices about people to spotlight or to invite for guest authorship?

I'll conclude by noting that for PatCon8 at the University of San Diego School of Law, I tried a new blogging approach: I live Tweeted the conference and then published a Tweet recap. (Aside: I started those Tweets by noting that 19% of PatCon8 participants (13 out of 68) were women. The PatCon9 speaker list currently has 24% (7 out of 29) women speakers, but I don't know which direction non-speaker participants will push this.) For PatCon9, should I (1) live Tweet again (#PatCon9), (2) just do a blog post with some more general reactions (as I've done for some conferences before), or (3) not blog about the conference at all?

Tuesday, March 26, 2019

Trademarking the Seven Dirty Words

With the Supreme Court agreeing to hear the Brunetti case on the registration of scandalous trademarks, one might wonder whether allowing such scandalous marks will open the floodgates of registrations. My former colleague Vicenç Feliú (Nova Southeastern) wondered as well. So he looked at the trademark database to find out. One nice thing about trademarks is that all applications show up, whether granted or not, abandoned or not. He's posted a draft of his findings, called FUCT® – An Early Empirical Study of Trademark Registration of Scandalous and Immoral Marks Aftermath of the In re Brunetti Decision, on SSRN:
This article seeks to create an early empirical benchmark on registrations of marks that would have failed registration as “scandalous” or “immoral” under Lanham Act Section 2(a) before the Court of Appeals for the Federal Circuit’s In re Brunetti decision of December, 2017. The Brunetti decision followed closely behind the Supreme Court’s Matal v. Tam and put an end to examiners denying registration on the basis of Section 2(a). In Tam, the Supreme Court reasoned that Section 2(a) embodied restrictions on free speech, in the case of “disparaging” marks, which were clearly unconstitutional. The Federal circuit followed that same logic and labeled those same Section 2(a) restrictions as unconstitutional in the case of “scandalous” and “immoral” marks. Before the ink was dry in Brunetti, commentators wondered how lifting the Section 2(a) restrictions would affect the volume of registrations of marks previously made unregistrable by that same section. Predictions ran the gamut from “business as usual” to scenarios where those marks would proliferate to astronomical levels. Eleven months out from Brunetti, it is hard to say with certainty what could happen, but this study has gathered the number of registrations as of October 2018 and the early signs seem to indicate a future not much altered, despite early concerns to the contrary.
The study focuses not on the Supreme Court, but on the Federal Circuit, which already allowed Brunetti to register FUCT. Did this lead to a stampede of scandalous marks? It's hard to define such marks, so he started with a close proxy: George Carlin's Seven Dirty Words. This classic comedy bit (really, truly classic) nailed the dirty words so well that a radio station that played the bit was fined and the case wound up in the Supreme Court, which ruled that the FCC could, in fact, ban these seven words as indecent. So, this study's assumption is that the filings of these words as trademarks are the tip of the spear. That said, his findings about prior registrations of such words (with claimed dual meaning) are interesting, and show some of the problems that the court was trying to avoid in Matal v. Tam.

It turns out, not so much. No huge jump in filings or registrations after Brunetti. More interesting, I thought, was the choice of words. Turns out (thankfully, I think) that some dirty words are way more acceptable than others in terms of popularity in trademark filings. You'll have to read the paper to find out which.