Wednesday, May 31, 2023

Guest Post: Charting New Paths in Innovation: Reflections from Harvard’s Innovation Economics Conference

By: Jillian Grennan, Associate Professor of Finance and Principal, Diversity Pilots Initiative

This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. The first blog in the series is here, and resources from the first conference of the initiative are available here.

Recently, I had the privilege of being part of the Junior Innovation Economics Conference at Harvard Business School. This diverse gathering of scholars from fields as varied as management, technology, economics, finance, and public policy delved headlong into the intricate dynamics of invention and innovation policy. Several researchers spoke about issues relevant for better understanding diversity and inclusion in the inventive process and how to improve it. These included: documenting gender disparities in attribution for innovative output, understanding how “opt-in” organizational processes can unlock the innovative potential of engineers from underrepresented groups, and measuring how broader representation can help bring more valuable innovations to market.

Friday, May 26, 2023

Guest Post: Bridging the Gap: IP Education for All with SLW Academy

By: Piers Blewett, Principal at Schwegman Lundberg & Woessner (SLW)

This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. The first blog in the series is here, and resources from the first conference of the initiative are available here.

Hello! I'm Piers Blewett, a principal at Schwegman Lundberg & Woessner (SLW), and a patent attorney who started in a place once known as Rhodesia, now Zimbabwe. My personal journey exposed me to the nuances of systemic change and the gap that can often exist when it comes to universal access to opportunities.

During the transitional period in Zimbabwe and later South Africa, I witnessed firsthand that systemic change does not always include broad availability of opportunities. Elements like knowledge transfer and mentorship can often seem out of reach, particularly for those at the beginning of these transitions.

This personal perspective was tragically echoed nearly three years ago. On May 25th, 2020, the world witnessed the heartbreaking tragedy of George Floyd’s murder at the intersection of 38th and Chicago Ave in Minneapolis, a location not far from our offices. The events etched George Floyd’s name into our collective memory, catalyzing a global outcry against systemic racism and underscoring the persistent racial disparities afflicting our communities.  

This tragedy led my team and me to ponder deeply on the systemic disparities that exist in our own professional sphere in Intellectual Property (IP), and to listen carefully to those impacted by the effects of injustice. I recalled what one of my mentors taught me year ago: "if you endow people with skills and mentors, they will succeed." With this background, we decided to act, and the SLW Academy was born. 

Wednesday, May 24, 2023

All Together Now: Highlights from the First Innovator Diversity Pilots Conference

Guest Post by Margo A. Bagley, Asa Griggs Candler Professor of Law, Emory University School of Law, co-inventor, and Principal, Diversity Pilots Initiative. Watch her video for Invent Together, entitled Challenges Encountered as a Diverse Inventor.

This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. The first blog in the series is here, and resources from the first conference of the initiative are available here.

In addition to being Associate Dean for Research and Asa Griggs Candler Professor of Law at Emory University School of Law, I am an African-American woman, co-inventor on two patents, patent attorney and law professor, author of numerous articles, chapters, and books on patent law, and advisor on patent issues to governments and international organizations. And yet, it is my firsthand experience, as a member of groups that have been systematically underrepresented and overlooked in the innovation ecosystem, that gives me a deep understanding and resolve to champion diversity and inclusion in innovation and led me to co-organize, with Professor Colleen Chien and personnel from the USPTO, the first Innovator Diversity Pilots conference held at Santa Clara Law School on November 18, 2022. (video recordings and slides available here.) This blog post, and others to follow in the series, will highlight practices that have been or will be tried, tested and evaluated to increase diversity in innovation. 

Tuesday, April 25, 2023

Are NDAs unenforceable when they protect more than trade secrets?

Are NDAs unenforceable when they protect more than trade secrets? The standard answer is no. NDAs can prevent disclosure of contractually-defined "confidential" information that is shared in the course of a confidential relationship, even if it is not technically a trade secret. NDAs can, in other words, go beyond trade secrecy.  

NDAs have also not traditionally been treated as contracts in restraint of trade, like noncompetes are. An NDA's purpose is, ostensibly, just to protect secrets. Similar to trade secret law, NDAs only prevent an employee from disclosing (and using outside authorization) specifically-defined information. They don't prohibit competition per se. NDAs are thus seen as comparatively "narrow restraints" which, all else being equal, should be preferred to noncompetes.

Or at least that is the common wisdom.  Although there is some support for this viewpoint in treatises and judicial dicta, our new article, Beyond Trade Secrecy: Confidentiality Agreements That Act Like Noncompetes, shows that a growing contingent of courts across jurisdictions are finding NDAs in employment agreements to be unenforceable when they reach too far beyond trade secrecy.  Even Google's NDA was recently found unenforceable by a California court, because it did not make sure employees could use or share skills they learned at Google with prospective employers. (That said, the Google opinion is quite extreme, even compared to others we reviewed. See pp. 8-11 of the opinion,  Doe v. Google, Inc., Case No. CGC-16-556034 (Cal. Super. Ct., Cty. of San Francisco, Jan. 13, 2022)).

The article is available on SSRN and is forthcoming in Yale Law Journal. It is co-authored by me and Chris Seaman.  This blog post is cross- posted on Patently-O  

Monday, April 24, 2023

Too Much of a Good Thing: Jake Linford on Copyright & Attention Scarcity

In his fascinating 2020 article in Cardozo Law Review, entitled Copyright and Attention Scarcity, Jake Linford provided a new justification for copyright law's barriers against derivative content—saving the overtaxed attention spans of copyrights' beleaguered audience. If readers and viewers got as much unauthorized derivative works as they wanted, Linford suggested, they would be unable to find the time and energy to read, watch, and sort through all of the derivatives available to them.  By giving original authors the right to control derivative works, copyright law protects the audience from content overload.  

I loved the article and really appreciated Linford's creative use of the literature on "attention scarcity." That said,  as a viewer and reader, I am not sure I like where the thesis leaves me. Speaking for myself, when I am tired and overloaded, the last thing I want is more originals. I want to return to my old favorites through a new lens; I want a sequel, a prequel, or a re-make. Whether these derivatives are authorized or un-authorized matters less to me than whether they are familiar and easy to get into without a lot of legwork. (I do want to know whether the content is made by or authorized by the original creator. But trademark law protects consumers from being misled as to source. Thanks to trademark law, I would know when the newest Star Wars is authorized by Disney and when it's not.)

I am about three years behind with this post.  My excuse, besides the pandemic, is that I felt it necessary to watch all seasons of Cobra Kai, along with the films in the original Karate Kid franchise, plus the entire library of Disney Plus, to fully research a response.

Monday, February 13, 2023

Lemley & McKenna: Trademark Spaces

Where a trademark is located matters. Some physical spaces on products are more likely to contain trademarks. Some obvious examples are the left breast of a t-shirt, the side or tongue of a sneaker, or the label on the front of a food container.  Consumers are more likely to find trademarks located in those spaces, and they are probably more likely to perceive features as trademarks if they are in those locations.

In their fascinating new article, Trademark Spaces and Trademark Law’s Secret Step Zero, Mark Lemley and Mark McKenna draw out the relevance of physical space for trademark protection, and in particular for non-verbal marks like logos and trade dress.  The authors argue that where a trademark is located determines how the law currently treats it, but that this is currently done by judges and trademark examiners as a "secret step zero." They think this is not ideal. Consideration of trademark spaces should instead be both more explicit and better thought-out. 

The article is now published in the Stanford Law Review (and posted here on SSRN).