tag:blogger.com,1999:blog-29772979317313465242024-03-12T00:51:57.958-04:00Written DescriptionPatent & IP blog, discussing recent news & scholarship on patents, IP theory & innovation.Lisa Larrimore Ouellettehttp://www.blogger.com/profile/18401005012430355377noreply@blogger.comBlogger672125tag:blogger.com,1999:blog-2977297931731346524.post-55403776696863994222024-01-23T14:32:00.002-05:002024-01-25T11:34:22.459-05:00Beyond the AI Black Box: Links to Articles and Excerpts From Interview With Charlotte Tschider <p>Maybe others are in the same boat. Until ChatGPT took the world by storm, I didn't have specific plans to write about AI at a granular level. Now my students and in-laws are asking about it. I have to write essays explaining how AI affects my work. The cases are cropping up. For others seeking to write about AI, and especially generative AI, I am sharing links to some articles I found helpful for understanding basic issues, as well as excerpts from an interview I did with Professor <a href="https://www.luc.edu/law/stories/faculty-profiles/charlotte-tschider-tech-savvy/">Charlotte Tschider</a>, where I asked her questions about AI that she patiently answered.</p><span><a name='more'></a></span><p><u><b>Links to readings:</b></u></p><p>The Sedona Conference published a very use-friendly explanation and survey of the implications of generative/AI for the law in general, issue-spotting all sorts of issues across practice areas: <a href="https://thesedonaconference.org/sites/default/files/announcements/Artificial-Intelligence-and-the-Practice-of-Law-Xavier-Rodriguez_1.pdf">Artificial Intelligence (AI) and the Practice of Law by Hon. Xavier Rodriguez.</a></p><p>Two articles I found useful for understanding the very-specific-mechanics of how generative AI's are actually created (with an eye to assessing copyright issues) are: <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4464001">Building and Using Generative Models Under US Copyright Law by Va</a><a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4464001">n Lindberg</a> and <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4523551">Talkin’ ‘Bout AI Generation: Copyright and the Generative-AI Supply Chain, by Katherine Lee, A. Feder Cooper, and James Grimmelman.</a> </p><p>On trade secrecy and privacy issues implicated by people using large language models like ChatGPT, I found <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4541500">Dave Levine's essay</a> and this <a href="https://jolt.law.harvard.edu/assets/articlePDFs/v36/Winograd-Loose-Lipped-LLMs.pdf">HJOLT note by Amy Winograd</a> really helpful. A pre-ChatGPT<a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3929928"> paper </a>co-authored by Sharon Sandeen questions whether AI related information like algorithms and training data qualifies for trade secrecy.</p><div>On patentability of AI, I found this Stanford Law panel <a href="https://www.youtube.com/watch?v=eDZRgdmCm2A">from 2019</a> featuring Lisa Ouellette and Mark Lemley very informative and not outdated. On patentability of AI and patentability of AI-outputs, I found this <a href="https://www.uspto.gov/sites/default/files/documents/USPTO_AI-Report_2020-10-07.pdf">2020 USPTO </a> report very, very helpful. Other pre-ChatGPT work on patents and AI that I found helpful include articles by <a href="https://papers.ssrn.com/sol3/cf_dev/AbsByAuth.cfm?per_id=1702576">Ryan Abbott</a> (the "<a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3056915">everything is obvious</a>" concern), <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3036030">Liza Vertinsky</a> (introducing "M/PHOSITA" for obviousness that takes into account machine as well as human skill in the art), <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4081569">Dennis Crouch</a> (assessing patentability of AI-generated inventions through lens of corporate ownership and copyright work for hire doctrine), <a href="https://papers.ssrn.com/sol3/cf_dev/AbsByAuth.cfm?per_id=1776889">Keith Robinson</a> (enablement issues raised by patenting AI), <a href="https://digitalcommons.law.scu.edu/chtlj/vol39/iss2/2/">John Villasenor</a> (including his recent Brookings paper on <a href="https://www.brookings.edu/articles/ai-inventions-policy-options-and-a-path-forward/">patentability of AI generated inventions</a>), <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4434054">Melissa Wasserman et al</a> (discussing patentability of AI-generated inventions from perspective of patent incentives theory).</div><div><br /></div><div>I found two articles especially compelling on why AI-training on copyrighted works is not generally copyright infringement...except when it is<i>. </i> <a href="https://texaslawreview.org/fair-learning/">Mark Lemley and Bryan Casey's article argues that AI training is generally "fair learning</a>," but that some outputs may infringe, such as wholesale copying that competes with the copyright owner's "core market." <a href="https://www.google.com/search?q=matt+sag+ssrn+AI+safety&sca_esv=596383914&rlz=1C5CHFA_enUS907US909&sxsrf=AM9HkKn2-2j-CU0ayN4U7PCAIDlVZ5fq_A%3A1704645304096&ei=uNKaZfrBBZutptQP3eivsAY&ved=0ahUKEwj6_cXO2suDAxWblokEHV30C2YQ4dUDCBA&uact=5&oq=matt+sag+ssrn+AI+safety&gs_lp=Egxnd3Mtd2l6LXNlcnAiF21hdHQgc2FnIHNzcm4gQUkgc2FmZXR5MggQIRigARjDBEi8CVDWAViVCHABeACQAQCYAVOgAbIDqgEBNrgBA8gBAPgBAcICCBAAGIAEGKIEwgIKECEYChigARjDBOIDBBgBIEGIBgE&sclient=gws-wiz-serp">Matt Sag's article</a> argues that training by AI's is generally not actionable because it's "non-expressive" use (<a href="https://scholarlycommons.law.emory.edu/faculty-articles/28/">copying expressive works for non-expressive purposes just like in the Google Books case</a>), but concedes that there is a risk of that the generative AI will "memorize" and spit out whole copyrighted works, as may have occurred with the <a href="https://www.nytimes.com/2023/12/27/business/media/new-york-times-open-ai-microsoft-lawsuit.html">New York Times' </a>content (although it's now appearing the prompts may have been <a href="https://techcrunch.com/2024/01/08/openai-claims-ny-times-copyright-lawsuit-is-without-merit/?guccounter=1&guce_referrer=aHR0cHM6Ly93d3cuZ29vZ2xlLmNvbS8&guce_referrer_sig=AQAAALA4vKjWFeyZekrRoGFb3fDtc2syTq7JOehsEbQQbGw68KVGH9RRL_3E2ucmphb4Oz-bXcyylmRUsxcrUgb6uUd-IpTmY1na6tEKkt9Q7F7WDEetdSh-7r5hyPsluNA-M6yfk8KIYIOUyAKVejOCv5W6NrE6ko1Yf02Rij6xp1XX">highly leading</a>?). Both approaches are outputs-focused: they look at whether the output of the AI is "substantially similar" to copyrightable expression and/or is fair use, and adopt a default assumption that training <i>alone</i> usually isn't infringing. </div><div><br /></div><div>On how copyright fair use doctrine will apply to AI training: <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4631726">Pam Samuelson</a> gives a summary of on-point fair use cases that might be applied in asking whether training on copyrighted works is fair use, giving arguments for both sides. I also found this article on EU law by <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4371204">Andres Guadamuz</a> helpful for thinking through high-level copyright questions of AI-authorship and AI-infringement. </div><div><br /></div><div><div>Other pre-ChatGPT work I found helpful: <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4014811">Carys Craig</a> (copyright and AI authorship) <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3369200">Daryl Lim</a> (AI and innovation policy), <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3536983">Arti Rai</a> & <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3341692">Nicholson Price</a> (medicine drug development machine learning). </div><div><br /></div><div>And last but not least, <a href="https://www.luc.edu/law/stories/faculty-profiles/charlotte-tschider-tech-savvy/">Charlotte Tschider</a>'s papers, including <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3855782">Beyond the Black Box</a> and <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4580744">Humans Outside the Loop.</a> Excerpts from our interview are below.</div></div><div><div><br /></div></div><div><u><b>Excerpts from interview with Prof. Tschider:</b></u></div><div><u><b><br /></b></u></div><div>A few weeks ago I interviewed <a href="https://www.luc.edu/law/stories/faculty-profiles/charlotte-tschider-tech-savvy/">Charlotte Tschider</a>, a professor at Loyola University Chicago School of Law. Her 2021 paper, <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3855782">Beyond the Black Box</a>, significantly deepened my understanding of AI. I asked her some very basic questions and tried to clear up some confusion/s I've been having.</div><div><br /></div><div><b>CAH</b>: Let's start with what artificial intelligence is. If you do an internet search for artificial intelligence, or AI, you often get something like "machine-assisted intelligence." Do you agree with that definition of AI?</div><p><b>CT</b>: No. I do not. It's more complicated, and definitions matter a lot, including for intellectual property law. It would be better to something like "using a machine or computer to perform tasks commonly associated with humans." That way we avoid making the claim that machines emulate human intelligence, because they don't. When we talk about AI we are really talking about is very, very robust computing power that creates algorithms that can mine data and create inferences and predictions from that data.</p><p><b>CAH</b>: How does AI differ from a prior technology with which IP scholars have become familiar: Software? </p><p><b>CT</b>: AI right now is mostly versions of machine learning, which leverages data to create more and and more complex algorithms. Software, loosely, is computer code and systems that are created and fully imagined by humans. Typically, with software, we know what it can do. Its functionality is limited. With AI, there is a degree to which we cannot know how decisions are made. So for example we get unpredictable results. We might get inaccurate results, so-called "hallucinations."</p><p>Another way software is different is because software involves creating computer code that can be re-used for other purposes. Typically, if you took a fully developed AI model and wanted to re-use it in a new application, you would probably have to do something different. </p><p>That said, a lot of software now incorporates AI too, so the line between them is blurring.</p><p><b>CAH</b>: I read your article, <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3855782">Beyond the Black Box</a>, twice. But before I read your article I often thought of AI as "just algorithms." But it is not accurate to say that AI is ultimately "just algorithms," correct? You talk in the paper about how AI runs on algorithms and that it's the algorithms that make it operate, but you draw a distinction between today's complex AI system that run on machine learning, deep learning, neural networks, what be it, and the "human-created algorithms" that we often think about in areas like internet search or credit scoring. (689-690). </p><p>Can you explain this distinction between human-created algorithms and the complex algorithms in advanced machine learning models?</p><p><b>CT</b>: <b> </b> Ordinarily algorithms are made by humans. Most human-created algorithms are "locked" on release. We have an algorithm and it does "XYZ." Some machine learning algorithms might operate a lot like human-created algorithms. But often machine learning algorithms are much more dynamic. They continue to learn from new data over time. This means that the algorithm itself can be different in a minute or an hour after the previous decision was made. It will be evolving and self-learning. </p><p>But humans are still involved at all chains of the creation of AI development, not just at that initial moment of creation of the algorithm. This is not a linear model even for data scientists. The layers of algorithms can be unintelligible by humans, but there is still human involvement at all times. Humans are needed to fix and refine the algorithms, even if they can't fully understand them. </p><p>Although we focus on "algorithms," the paper explains that every other human decision of the AI system creates the algorithm in a machine-learning system. The infrastructure, such as server selection, database selection, application or app design, networking solution, all affect the performance of the algorithm. The algorithm results from several decisions about training data, production data, limits of decisions, hard-coded goals and expected outcomes, and the number of algorithms and outputs needed to achieve these outcomes (in neutral networks, we call these 'layers').</p><p><b>CAH</b>: And that issue, the continuing role of the human decision-maker, that's the topic of your new paper, <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4580744">Humans Outside the Loop, correct, so I'll post that link,</a> forthcoming in <i>Yale Journal of Law and Technology.</i></p><p>Let's turn to generative AI, the species of AI that ChatGPT falls into. How would you define this as a species of AI? How is generative AI different from other AI?</p><p><b>CT</b>: I think of generative AI as using machine learning models but in a way that also includes some ability to mine and analyze human language and other expression (most of current focus is on pure language models, rather than language to image models as we might see in stable diffusion). Human language is actually very inefficient and difficult to analyze and express, whether it's English or anything else. Machines communicate in a truncated format that can be very efficient. Language models have to be able to convert speedy computing language (zeros and ones) into something that comes back out as human language. The more complex what you are expecting the computer to do, the harder that is. The greater variation of language needed for a particular use defines whether the language model is a small or large model. </p><p>Basic chat functions, like IVRs (interactive voice response systems) that you interact with when you call a toll-free number, or basic chat on Amazon, those are comparatively simple AI implementations if the universe of responses is limited. We know at least some universe of what people might ask about. If you're on an Amazon chat, for example, you might be asking about shipping speed or cost of shipping or something like that. And if it gets too complex, where the AI doesn't understand it, it hikes it over to a human.</p><p>So that's a very simple language model. In contrast, ChatGPT is a "large language model." The amount and the variety of language is much larger, as are the complexity of potential prompts, including a universe of contextual cues, including prompts for linguistic tone. The universe of language that this system is trained on is a subset of what you might find on the web. This is part of why each release may not be 100% current with what is currently available on the web through a Google search.</p><p><b>CAH</b>: One thing I am getting from this is just how much variety there is in how AI is designed, even between so-called chat bots.</p><p><b>CT</b>: The reality is that every single AI implementation is different. You can't necessarily generalize about how AI functions, and you really have to talk to the person that creates it to understand specifically how it's implemented. But you can at least say, OK, generally machine learning does this. Generally neural networks do this. And the degree to which you can understand what's happening is reciprocal to the to the number of layers in the system and the complexity of the system. In the law, we deal in generalities, but in regulating AI this becomes very difficult when we discuss things like safety, which is dependent on the details of a given implementation and its design for specific goals.</p><p><b>CAH</b>: Let's talk about intellectual property. Let's talk about patents. First there is the patentability of the AI itself, the algorithms and so forth. You suggest in <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3855782">Beyond the Black Box</a> that, from the public policy perspective, patents are superior because mandatory disclosure in patents could aide in transparency. (714-716). But when are patents actually available for AI? </p><p><b>CT</b>: First, I'm not sure that patents are always superior, but they are recognized as a stronger form of IP because an inventor can enforce against infringing patents—the right to exclude others from making, using, or offering for sale the patented invention. Determining what is patentable about AI can be challenging in part because we have a history of denying patents for "abstract ideas," and some might consider AI as just an abstract idea. If we limit AI to just an algorithm, sure. But that is not all AI is. AI is not just taking an existing process and automating it. It's inherently transformative when we factor the underlying system powering it and the process that creates it.when we factor the underlying system powering it and the process that creates it.</p><p><b>CAH</b>: So even under the <i><a href="https://scholar.google.com/scholar_case?case=12104168823829098064&q=alice+v+cls+bank&hl=en&as_sdt=6,33">Alice</a></i> framework, you think a generative AI model, for example, could be patented?</p><p><b>CT</b>: Yes, the "process" involved in creating AI is a lot more than just an "abstract idea." So except for a simple algorithm itself, I think there is a way to get there. The patent office patents many AI inventions. Within the limits of obviousness, enablement, and the other criteria of course.</p><p><b>CAH</b>: And then there's the outputs of AI, the <a href="https://cafc.uscourts.gov/opinions-orders/21-2347.OPINION.8-5-2022_1988142.pdf">Thaler v. Vidal</a> issue of whether AI can be an inventor for purposes of patent law. What if I said, "An AI-generated invention cannot be patented." Do you agree?</p><p><b>CT</b>: I don't agree with that, no. And and I honestly think that the Patent Office really was following the Copyright Office on this, as a starting point, without fully understanding this technology yet.</p><p><b>CAH</b>: You don't agree with the stance that "an AI-generated invention cannot be patented" as a matter of law or as a matter of policy?</p><p><b>CT</b>: Either actually. The reason I don't agree as a matter of law is because there are a variety of inventions that are patentable where humans have set things in motion but may not understand every detail of how it works. As humans, we've made decisions that ultimately result in something that is protectable. But did we make discrete choices about every single step in that process? I would say no, especially when we're talking for example about things like pharmaceuticals. WeIn many cases, we have combined some things together, and we gotthe molecular compound produced a result we didn't expect. And we patented those. There's this presumption that a human is sort of making every single discrete choice related to an invention, but the reality is that a lot of inventions occur by mistake and by happenstance and by luck. What matters is that a human designed it, not that a human understands all of it. Moreover, patents are cabined by what is actually written in the claims and written description, so what the invention is, or its ability to produce additional inventions, presumably would be limited in nature. However, expressive works, which are stand-alone and not cabined by a prosecution process, are likely distinct. </p><p>If a human creates a patentable AI system that then produces something that is potentially inventive and would meet the other characteristics of an invention, why would we prevent that human from claiming the result of the invention that they created?</p><p><b>CAH</b>: So at minimum, with respect to the human that created the AI, there might be a way to get a patent for AI-generated outputs.</p><p><b>CT</b>: Yes. Let's use a real example. Let's say you create an AI application that is designed to identify new molecular compositions related to pharmaceuticals. And guess what? It identifies 5 candidates. You test them and let's say one of them is totally legitimate. It very much could be a new composition. Is the expectation that you can't patent that?</p><p><b>CAH</b>: Leaving patents behind, you suggest in <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3855782">Beyond the Black Box</a> that AI is especially conducive to trade secrecy. You say, "the natural status of a dynamically inscrutable algorithm" makes it "a natural trade secret." Parsing this, there could be many trade secrets here. You've got the algorithms. You've got the training data, that is the data that a specific AI was trained on. And you've got the overall methodology for how the model was developed and trained. </p><p>What is the<a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=704644#:~:text=Andrew%20Beckerman%2DRodau,-Suffolk%20University%20Law&text=Patent%20and%20trade%20secret%20law,of%20protection%20to%20rely%20on."> choice between patent and trade secrecy </a>going to look like for AI?</p><p><b>CT</b>: We often think about patents and trade secrets as interchangeable for AI. But the calculus is different depending on the type of information we are considering. Trade secrecy is probably going to be best for the training data and the algorithms, because they're reasonably easy to keep secret. At least for the algorithm, we can't even understand what it is, at least today, or how it functions. And for the training data set, that is not revealed to users or the public, and it is going to have some security around it. There is limited access to the dataset. This is all kept "reasonably" secret through a variety of different strategies.</p><p>But I think when it comes to protecting the whole system architecture, the design choices, the process of model development, I don't know that trade secrecy is the best approach. I actually think patent is better for this, for a variety of reasons. Number one, those would be comparatively easier to <a href="https://www.yalelawjournal.org/article/the-law-and-economics-of-reverse-engineering">reverse engineer</a>. Second, there's the public benefit in disclosure, even later disclosure (for innovation, safety, and fairness concerns). I should also mention that trade secrets are not the only impediment to disclosure. Confidentiality obligations, limited data sharing agreements, and other contractual obligations may increase the amount of information maintained as proprietary and are relatively intractable as creatures of private law. I talk about this in some detail in <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3961863">Legal Opacity: Artificial Intelligence's Sticky Wicket.</a></p><p><b>CAH</b>: Ok, so for algorithms and training data, trade secrecy works, but for the overall method used to develop the AI, the "process" as you said, patent may be better. </p><p>Now for the crazy part. In <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3855782">Beyond the Black Box</a>, you suggest that complex AI algorithms can "survive reverse engineering..." I have heard that there are ways to reverse engineer even the most complex AI's. I sent you a 2016 paper on so-called <a href="https://dl.acm.org/doi/fullHtml/10.1145/3485832.3485838#:~:text=Model%20Extraction%20Attacks.,-With%20the%20availability&text=In%20terms%20of%20accuracy%20model,dataset%20for%20the%20extracted%20model.">model extraction attacks</a>. This paper suggests it is possible to reverse engineer some aspects of AI, even when the user only has "black-box" access like with ChatGPT. What are your thoughts? Is it possible?</p><p><b>CT</b>: It depends on what we are talking about. Most deep learning algorithms will not be susceptible to reverse engineering without other accompanying data about the training data and foundation model. If the data scientist who is privvy to this information cannot determine why an algorithm made a particular decision, I would say it is nearly impossible to reverse engineer. Although model extraction attacks could provide some information about the algorithm(s). I don't think that would be enough to completely destroy trade secrecy. I think it might be enough to figure out something about the AI, but not to discover all of it, so it would be at best a "partial reverse engineering," is how I would describe it. </p><p><b>CAH</b>: Yeah. There is still a lot of secret information left over. Some elements are known, but not all of it. The whole combination of training data can be what trade secrecy calls a "combination" trade secret. </p><p><b>CT</b>: And again, this is where distinguishing between one algorithm and many algorithms matters, because with a very simple AI implementation, you might be able to figure out how the algorithm works, but in complex implementations where you have, let's say, 1000 layers of algorithms (models more like 'deep learning' neural networks), it will be nearly impossible. Understanding how those thousand layers work together and how each of those algorithms functions in relation to the other, with different weightings between the layers? No, it's not going to happen.</p><p><b>CAH</b>: Thank you so much for talking this me. This has been so helpful. </p><p><br /></p>Camilla Hrdyhttp://www.blogger.com/profile/12721860033221697174noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-22913624025361445802023-12-20T15:34:00.001-05:002023-12-20T15:34:47.623-05:00Guest post by Gugliuzza, Goodman & Rebouché: Inequality and Intersectionality at the Federal Circuit<p><b>Guest post: <a href="https://law.temple.edu/contact/paul-gugliuzza/">Paul Gugliuzza</a> is a Professor of Law at Temple University Beasley School of Law, <a href="https://kentlaw.iit.edu/law/faculty-scholarship/faculty-directory/jordana-r-goodman">Jordana R. Goodman</a> is an Assistant Professor of Law at Chicago-Kent College of Law and an innovator in residence at the Massachusetts Institute of Technology, and <a href="https://law.temple.edu/contact/rachel-rebouche/">Rachel Rebouché</a> is the Dean and the Peter J. Liacouras Professor of Law at Temple University Beasley School of Law.</b></p><p><i>This post is part of a series by the <a href="http://diversitypilots.org/">Diversity Pilots Initiative</a>, which advances inclusive innovation through rigorous research. The first blog in the series is <a href="https://patentlyo.com/patent/2023/04/inventor-diversity-initiative.html">here</a>, and resources from the first conference of the initiative are available <a href="https://law.scu.edu/high-tech-law-institute/innovator-diversity-pilots-conference-schedule/">here</a>.</i></p><p>The ongoing reckonings with systemic racism and sexism in the United States might seem, on first glance, to have little to do with patent law. Yet scholarship on racial and gender inequality in the patent system is growing. Recent research has, for example, shown that women and people of color are underrepresented among <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3634987">patent-seeking inventors</a> and among <a href="https://www.uspto.gov/sites/default/files/documents/Landslide_Diversity_Article_September.pdf">lawyers and agents at the PTO</a>. In addition, scholars have explored <a href="https://www.sup.org/books/title/?id=27831">racist</a> and <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4007539">sexist</a> <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4371421">norms</a> baked into the content of patent law itself. </p><p>In a <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4614338">new article</a>, we empirically examine racial and gender inequality in what is perhaps the highest-stakes area of patent law practice: appellate oral argument at the Federal Circuit. </p><p>Unlike many prior studies of inequality in the patent system, which look at race or gender in isolation, our article looks at race <i>and</i> gender <i>in combination</i>. The intersectional approach we deploy leads to several new insights that, we think, highlight the importance of getting beyond “single-axis categorizations of identity”—a point Kimberlé Crenshaw <a href="https://chicagounbound.uchicago.edu/cgi/viewcontent.cgi?article=1052&context=uclf">made</a> when introducing the concept of intersectionality three decades ago. </p><p>The dataset we hand built and hand coded for our study includes information about the race and gender of over 2,500 attorneys who presented oral argument in a Federal Circuit patent case from 2010 through 2019—roughly 6,000 arguments in total. Our dataset is unique not only because it contains information about both race and gender but also because it includes information about <i>case outcomes</i>, which allows us to assess whether certain cohorts of attorneys win or lose more frequently at the Federal Circuit. </p><p>Perhaps unsurprisingly, we find that the bar arguing patent appeals at the Federal Circuit is overwhelmingly white, male, and white + male, as indicated below, which break down, in a variety of ways, the gender and race of the lawyers who argued Federal Circuit patent cases during the decade covered by our study. (Note that the figures report the total number of <i>arguments</i> delivered by lawyers in each demographic category. Note also that the number of arguments we were able to code for the race of the arguing lawyer was slightly smaller than the number of arguments we were able to code for the gender of the arguing lawyer, so the total number of arguments reported on the figures differ slightly.)</p><p></p><div style="text-align: center;"><b>Federal Circuit Patent Case Oral Arguments, 2010-2019 </b></div><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjHVf4tylCtcVfKvBXl7LEOo2i2cRj4aznzGoYN8D20OtDetYDBsgJ8DIYtDExjygK5PsVc9I6IGNJ7KgmoxH8LnQ0OeFZXY6r1zQosRhFymehzLgweNS99DZuxRl7UMNWnKjPafvC6bKx6-w_y5N2C1pXvPx8rjdgz4sQF7yL8CiFfIxJ9aGBOqJ-Gmf8e/s382/Fig1.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="252" data-original-width="382" height="264" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjHVf4tylCtcVfKvBXl7LEOo2i2cRj4aznzGoYN8D20OtDetYDBsgJ8DIYtDExjygK5PsVc9I6IGNJ7KgmoxH8LnQ0OeFZXY6r1zQosRhFymehzLgweNS99DZuxRl7UMNWnKjPafvC6bKx6-w_y5N2C1pXvPx8rjdgz4sQF7yL8CiFfIxJ9aGBOqJ-Gmf8e/w400-h264/Fig1.png" width="400" /></a></div><p></p><p>What <i>is</i> surprising, however, is that the racial and gender disparities illustrated above dwindle when we look only at arguments by lawyers appearing on behalf of <i>the</i> <i>government</i>, as shown below, which limit our data only to arguments by government lawyers. (About 75% of those government arguments were by lawyers from the PTO Solicitor’s Office; the others came from a variety of agencies, including the ITC and various components of the DOJ.)<span></span></p><a name='more'></a><p></p><p></p><div style="text-align: center;"><b>Federal Circuit Patent Case Oral Arguments, 2010-2019 – Government Lawyers Only </b></div><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiLPdU5_AFnX8cV911-uA6cAr3Y97aVagHjYYsAvp2UjGiEklD6FKqR62T5jAd8voZyHG0MC0T2B1CiuwTUNB9K0UwhoTH0n_UQgaUeBoxnu1N8LgS7VU_-UPDr1zC0BdlMiWXtxRp3hr4f9_cyu3n82rRW-2eKBmEIhG2ZoQTCs_RJt4OANGGC3Z1-I0k7/s387/Fig2.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="256" data-original-width="387" height="265" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiLPdU5_AFnX8cV911-uA6cAr3Y97aVagHjYYsAvp2UjGiEklD6FKqR62T5jAd8voZyHG0MC0T2B1CiuwTUNB9K0UwhoTH0n_UQgaUeBoxnu1N8LgS7VU_-UPDr1zC0BdlMiWXtxRp3hr4f9_cyu3n82rRW-2eKBmEIhG2ZoQTCs_RJt4OANGGC3Z1-I0k7/w400-h265/Fig2.png" width="400" /></a></div><p></p><p>In fact, among lawyers appearing on behalf of the government, the proportion of arguments by women, people of color, and women of color exceeded the proportion of women, people of color, and women of color in the total population of practicing lawyers—that is, <i>all</i> lawyers, not just patent lawyers. Among private sector patent lawyers, by contrast, the proportion of arguments by women, people of color, and women of color was much <i>lower</i> than the proportion of women, people of color, and women of color in the total population of lawyers, as shown on the table below.</p><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgnOA0ymxWxGq8pLadhG8_Fl6QbyWQpggWVIbTDyeqakJIxUxEhPIu4-9erk7XuO4dPk92eLCmV2Nx5RS9E38iKfYOG8CwzWz_x8y8tWboUjd7DV6kpyIiSuLLvWCGXdRG86CZiiqMGWA67FON68Z8FnYYxVI42m0p2oW086SdlcXoplWUSHBcwcvLzRzWj/s808/Screenshot%202023-12-20%20at%2012.17.52%E2%80%AFPM.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="166" data-original-width="808" height="83" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgnOA0ymxWxGq8pLadhG8_Fl6QbyWQpggWVIbTDyeqakJIxUxEhPIu4-9erk7XuO4dPk92eLCmV2Nx5RS9E38iKfYOG8CwzWz_x8y8tWboUjd7DV6kpyIiSuLLvWCGXdRG86CZiiqMGWA67FON68Z8FnYYxVI42m0p2oW086SdlcXoplWUSHBcwcvLzRzWj/w400-h83/Screenshot%202023-12-20%20at%2012.17.52%E2%80%AFPM.png" width="400" /></a></div><p>To restate those findings in a slightly different fashion: we find that, among lawyers arguing patent cases at the Federal Circuit, a government lawyer is 2.3 times more likely than a private-sector lawyer to be a person of color, over 5 times more likely to be a woman, and over 10 times more likely to be a woman of color.</p><p>Remarkably, the racial and gender disparities we find—particularly among Federal Circuit lawyers from the private sector—bear no relation to attorney performance. As we explain at length in our article, appellants in Federal Circuit patent cases win about a quarter of the time and appellees win about three-quarters of the time—with no significant differences based on race, gender, or the intersection of the two.</p><p>There is, however, one group of lawyers who do win more frequently than all others: a small group of 65 private-sector lawyers who argue patent cases at the Federal Circuit more than anyone else—on average, at least once a year. When seeking to overturn a judgment of a district court, the PTO, or the ITC in a patent case, those frequent Federal Circuit advocates succeed 41% of the time, as compared to a 24% win rate for the other private-sector lawyers in our dataset. That finding adds a patent-law angle to a <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1022629">growing</a> <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2741853">literature</a> documenting the remarkable influence a small group of specialist appellate litigators (mostly white and male, and almost all at the wealthiest, most prestigious law firms in the world) have had on the U.S. legal system.</p><p>We conclude our article with some ideas about how to make the patent system, and high-level law practice generally, more diverse and inclusive. In the main, we think our findings about the large proportion of women, people of color, and women of color arguing patent appeals for the government undercuts the oft-mentioned “<a href="https://www.bloomberglaw.com/bloomberglawnews/ip-law/X157PM74000000?bna_news_filter=ip-law#jcite">pipeline</a>” explanation for a lack of diversity in patent law—that is, the idea that women and people of color are absent because they lack scientific or technical backgrounds. </p><p>Not only is that explanation based on outmoded conceptions of what patent practice entails—especially patent litigation—our data suggest there <i>are</i> women, people of color, and women of color arguing patent cases at the highest level—they are just not getting many opportunities to do so in law firm practice. Indeed, though the number of government arguments in our dataset (567) is less than one-tenth the number of arguments by private-sector lawyers (5825), the government had a greater number of arguments presented by women of color (65) than the private sector did (60). </p><p>The inequalities we find among private-sector patent lawyers, and the lack of correlation between those inequalities and case outcomes, suggest that entry into the upper echelon of patent practice is about more than winning and losing in the courtroom. As a recent <a href="https://www.americanbar.org/groups/diversity/women/initiatives_awards/bias-interrupters/">ABA report</a> on “interrupting bias” suggests, to really make progress with race and gender equity, we must focus on the structural causes of disadvantage and exclusion. For instance, law firms can use concrete, objective metrics to track the effects of diversity efforts, to ensure promoting diversity is rewarded in performance reviews, and to ensure no demographic group is being treated differently in assignments, evaluation, and compensation. </p><p>In short, broadening the population of lawyers who make it to very top of appellate practice will require a more deliberate approach than “<a href="https://hbr.org/2020/11/getting-serious-about-diversity-enough-already-with-the-business-case">add diversity and stir</a>”; it will require disrupting the rules and norms that exclude and undermine outsiders to the status quo.</p><p><b>Three main takeaways:</b></p><p></p><ol style="text-align: left;"><li><b>Racial and Gender Disparities in Patent Law Practice: </b>The study highlights that the demographic of attorneys arguing patent appeals at the Federal Circuit is predominantly white and male. This disparity is evident when compared to the total population of practicing lawyers. However, an interesting contrast is observed in government lawyers, where the proportion of arguments by women, people of color, and women of color exceeds their proportion in the overall lawyer population.</li><li><b>No Difference Between Attorney Demographics and Case Outcomes:</b> Despite the noted disparities in racial and gender representation, these factors do not correlate with the success rates in court. The data indicates that appellants in Federal Circuit patent cases win roughly a quarter of the time and appellees three-quarters of the time, irrespective of the attorney's race, gender, or their intersection.</li><li><b>Need for Structural Changes to Enhance Diversity: </b>The post concludes that the disparities in private-sector patent law practice and the absence of correlation with case outcomes point to a need for more than just increasing diversity. There is a call for addressing structural causes of disadvantage and exclusion in the legal profession. This includes implementing concrete measures in law firms to track and promote diversity, ensuring fair treatment in assignments, evaluations, and compensation, and disrupting norms that perpetuate the status quo, thereby broadening the population of lawyers in top appellate practice.</li></ol><p></p><p>If you find this insight compelling and want to stay informed on the latest developments, sign up for the DPI research updates today!</p>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-73512406296689183222023-12-20T15:01:00.003-05:002023-12-20T15:15:17.115-05:00Guest post by Heath, Seegert & Yang: Open-Source Innovation and Team Diversity<p><b>Guest post by <a href="https://www.davidsonheath.com/">Davidson Heath</a>, Assistant Professor of Finance, <a href="https://www.nathanseegert.com/">Nathan Seegert</a>, Associate Professor of Finance, and <a href="https://eccles.utah.edu/team/jeffrey-yang/">Jeffrey Yang</a>. All authors are with the University of Utah David Eccles School of Business.</b></p><p><i>This post is part of a series by the <a href="http://diversitypilots.org/">Diversity Pilots Initiative</a>, which advances inclusive innovation through rigorous research. The first blog in the series is <a href="https://patentlyo.com/patent/2023/04/inventor-diversity-initiative.html">here</a>, and resources from the first conference of the initiative are available <a href="https://law.scu.edu/high-tech-law-institute/innovator-diversity-pilots-conference-schedule/">here</a>.</i></p><p>Diversity in innovation is essential. Varied perspectives, experiences, and skills foster creativity and problem-solving. Diverse teams are more likely to challenge assumptions, leading to novel solutions and breakthroughs. Variety in tastes and background can help identify and serve a wide range of user needs. </p><p>Open-source software (OSS) is often praised for its ability to foster innovation. Part of the rationale is that OSS allows for open collaboration, enabling continuous improvement and adaptation by a diverse community. For example, a vast garden of open-source large language models such as Meta’s Llama 2 are flourishing and are projected to surpass closed-source AI in the near future. </p><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhPDuKorDWizDpmTNX1TTdvzmEhRxL2R8omlgMFTcb_aE_HSTpX4_CnzY9yC0qI7r2cXfwfNkePH2aIMcXP8u7BrQhAX5y5EmHIdKLtxrWSCN1m-k2adnrnuT55rirBob6nrDPasLU7qcvH7UyTWmPIwI1VHaoMtx1IZ7No5EGo9-m4_WgEQp7zZepiY6_9/s388/Heath.png" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="240" data-original-width="388" height="198" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhPDuKorDWizDpmTNX1TTdvzmEhRxL2R8omlgMFTcb_aE_HSTpX4_CnzY9yC0qI7r2cXfwfNkePH2aIMcXP8u7BrQhAX5y5EmHIdKLtxrWSCN1m-k2adnrnuT55rirBob6nrDPasLU7qcvH7UyTWmPIwI1VHaoMtx1IZ7No5EGo9-m4_WgEQp7zZepiY6_9/s320/Heath.png" width="320" /></a></div><p style="text-align: center;"><b>Figure 1. Capabilities of Machine Learning Models: Open vs. Closed-Source </b></p><p>The open-source collaborative model has accelerated innovation in many fields. Yet to date, we know little about how these teams form, and how their diversity impacts productivity. How does the diversity of OSS teams compare to the overall contributor pool? And what are the productivity outcomes for OSS teams that increase their diversity compared to those that do not?<span></span></p><a name='more'></a><p></p><p>In our <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4655458">new paper</a>, entitled "Team Production and the Homophily Trap: Evidence from Open-Source Software," we examine the dynamics of diversity and productivity in the OSS setting. The key novel concept that we introduce is homophily - the tendency of individuals to associate with others who are similar. This tendency, while natural, has important implications for the diversity and productivity of OSS teams. By analyzing over 40,000 teams developing OSS projects over a ten-year period, we uncover two facts – (1) <i>teams tend to be less diverse than the available pool of contributors, primarily due to homophily</i> and (2) <i>teams that add diversity have higher productivity, suggesting that other teams are “stuck” in an inefficient, low-diversity state</i>. Strikingly, this pattern has been getting worse, not better, over time; as the coder population has expanded, average team diversity has actually fallen.</p><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgQtQhrNXowMd9obe3hsyZmySkGUuBp5cEBNht7hB9ZokQhDdwxY2G3rA_lbVEvBf8cYMWJLNvz-AgZtn2Q19hjHqcEx_Dbc5ilLzm75zW6cD4IhDEt4_ts-J7IA39nlsf55hAOp6eKvvcG6N6ySpYxproApCgUvntRTWzt_BKLDT-uhQnm7vrdG0bVLt2f/s480/Heath2.png" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="358" data-original-width="480" height="239" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgQtQhrNXowMd9obe3hsyZmySkGUuBp5cEBNht7hB9ZokQhDdwxY2G3rA_lbVEvBf8cYMWJLNvz-AgZtn2Q19hjHqcEx_Dbc5ilLzm75zW6cD4IhDEt4_ts-J7IA39nlsf55hAOp6eKvvcG6N6ySpYxproApCgUvntRTWzt_BKLDT-uhQnm7vrdG0bVLt2f/s320/Heath2.png" width="320" /></a></div><p style="text-align: center;"><b>Figure 2. Trends over Time in Open-Source Coder Population and Team Diversity </b></p><p>This pattern, which we term the “homophily trap", is detrimental to development and innovation. For those leaders working on software projects or within engineering, scientific and innovative teams, our study highlights the importance of the following questions: How can organizations avoid the homophily trap? What specific strategies can be employed to attract and retain diverse team members? What gains can organizations expect to see from diversifying their teams? </p><p>Our study helps to answer some of these questions. First, we show that team diversity has large positive returns to productivity. We find that teams that do escape the homophily trap by increasing their diversity are more likely to continue to be actively developed; have more development activity, conditional on continuing; and attract a larger and more diverse userbase. These effects are especially strong for teams that start at lower levels of diversity, underlining the substantial untapped potential in diversifying team composition.</p><p>Second, our study provides suggestions and strategies for enhancing team diversity and escaping the homophily trap. Importantly, initiatives to increase the diversity of the overall pool of contributors can actually backfire because a more diverse pool gives teams more similar peers to assort with. To combat this tendency, teams need policies that directly encourage diversity at the team level. Such policies can break the cycle of homophily-based selection into homogeneous groups. To attract and retain diverse team members, it is important to implement inclusive recruitment practices and establish an environment that values diverse perspectives. Finally, educate your engineers. By promoting awareness of the benefits of diversity, it may be possible to avoid the homophily trap. </p><p>For engineers, scientists, and inventors, we believe the insights from our study highlight the crucial role of team diversity in driving innovation and productivity. Teams might prefer similar peers for ease of coordination and communication and might prefer to recruit known quantities from their social networks, but these benefits are smaller than the gains to productivity from a more diverse team. And importantly, interventions targeted at increasing diversity on teams can yield improvements in both team diversity and project outcomes. This perspective is particularly relevant for organizations in settings where collaboration and innovation are paramount.</p><p><b>Three main takeaways:</b></p><p></p><ol style="text-align: left;"><li><b>Diversity Drives Innovation:</b> Diversity in teams fosters creativity and problem-solving. It is a positive input into innovative breakthroughs and addressing a wide range of user needs.</li><li><b>The Homophily Trap: </b>Our study uncovers a “homophily trap” in open-source software teams, where teams are less diverse due to a preference for similarity, limiting their potential. Quasi-experimental estimates suggest an increase in team diversity results in a 2.4 percentage point increase in the likelihood that a project remains active in the subsequent year. An increase in team diversity also leads to significant increases in the size and diversity of the project’s userbase.</li><li><b>Strategies to Enhance Diversity:</b> To mitigate the homophily trap, our study suggests promoting diverse team formation, targeting low-diversity teams in particular, and creating supportive environments for diverse talent.</li></ol><p></p><p>If you find this insight compelling and want to stay informed on the latest developments, <a href="mailto:diversitypilots@gmail.com">sign up for the DPI research updates today</a>!</p>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-4587189726197005152023-09-27T16:00:00.001-04:002023-09-27T16:00:00.158-04:00Guest Post by Paola Cecchi Dimeglio: An Invitation to Inclusive Innovation<p><b>Guest post by <a href="https://www.paolacecchidimeglio.com/">Dr. Paola Cecchi Dimeglio</a>, Chair of the Executive Leadership Research Initiative for Women and Minorities Attorneys at Harvard Law School and Harvard Kennedy School</b></p><p><i>This post is part of a series by the <a href="http://diversitypilots.org/">Diversity Pilots Initiative</a>, which advances inclusive innovation through rigorous research. The first blog in the series is <a href="https://patentlyo.com/patent/2023/04/inventor-diversity-initiative.html">here</a>, and resources from the first conference of the initiative are available <a href="https://law.scu.edu/high-tech-law-institute/innovator-diversity-pilots-conference-schedule/">here</a>.</i></p><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEg5liGq1AWPwEkvOy2pwKiEtgIkIZQETtNTj7zgIbp-1XrHGjBNuGIBCkM_ApYm_DtQJvQG37iwQGgYUSzz2QAfsrTPT3BaKMTT_pHJApw5X8FwHVNzPse19FzfRvaE1LOxqwRohlrF-tn8mvx72db54Sf1n-v1RgsqlFi8CeauBdmPPiZWEqB-c_lVOLD7/s310/Paola.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="310" data-original-width="310" height="310" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEg5liGq1AWPwEkvOy2pwKiEtgIkIZQETtNTj7zgIbp-1XrHGjBNuGIBCkM_ApYm_DtQJvQG37iwQGgYUSzz2QAfsrTPT3BaKMTT_pHJApw5X8FwHVNzPse19FzfRvaE1LOxqwRohlrF-tn8mvx72db54Sf1n-v1RgsqlFi8CeauBdmPPiZWEqB-c_lVOLD7/s1600/Paola.png" width="310" /></a></div><blockquote><p><b><i>Virtual reality, AI chatbots, and other emerging technologies are fueling a drive to innovate, improve, and patent new products and services that are inclusive from the beginning. This goal is not only morally right but also economically essential; inclusive innovation has become a multibillion-dollar necessity. However, engaging diverse inventors at large technology companies still presents layers of challenges.</i></b></p></blockquote><p>In 2022, the USPTO reported a <a href="https://www.uspto.gov/sites/default/files/documents/oce-women-patentees-report.pdf">32% growth</a> in the number of U.S. counties where women patented over the 30-year span from 1990 to 2019; in 2019, over 20% of patents issued included at least one woman inventor; similar data is not available for minority inventors. </p><p>Perhaps more than at any time in their history, technology companies are under pressure to achieve patentable breakthroughs. One factor driving the urgency of innovation is the need to create and commercialize products and services that meet the promises of emerging technologies. Once the stuff of sci-fi and fantasy, the Metaverse and humanlike generative AI have taken substantial steps out of movies and literature. Virtual and augmented reality has gone mainstream, and the premier generative AI chatbot, ChatGPT, set user records shortly after it was released late in 2022. Having sampled the Metaverse and prompted chatbots to pour out pages, the public wants more, and they want it now.</p><p>Technology giants often partner with smaller, specialized businesses for the purpose of achieving technological breakthroughs. These collaborative ventures may produce new platforms, result in extensive IP development, and spawn multiple families of products. Most often, they fail. </p><p>In the current race to innovate, businesses are looking within their ranks for beneficial patentable ideas. It makes sense, as employees at all levels of a company have a close relationship with that organization’s products, patents, and aspirations. Leaders realize that the next big invention can emerge from unexpected quarters at their businesses, and many have begun casting the net as wide as possible. </p><p>This time around is different. Innovation has to be highly inclusive at the outset. The environments, cultures, policies, and dynamics of virtual worlds have to operate without traditional biases. And AI has to think and decide without the incidents of discrimination that are dragging many businesses into court. It’s about the bottom line. A Metaverse that is not tuned to highly diverse users cannot achieve its full value potential, estimated at $936.6 billion by 2030. To realize these earnings, inclusion has to be a real part of the innovation process. </p><p><span></span></p><a name='more'></a>Achieving this end at a company means having all perspectives involved in the inventing and patenting processes. Businesses’ all-hands invitations to inclusive innovation have come up against the history of who is more likely to file patents and who is not. Some organizations realize that their own culture has long perpetuated the stereotypes of who is an inventor. Most businesses are running up against the default assumptions that they have cultivated for decades. Some have invested significantly in changing the status quo. Many businesses, including prominent technology companies, have signed a <a href="https://increasingdii.org/pledge/">Diversity Pledge</a> and have committed to sharing many of their outcomes. <p></p><p>Other businesses and one significant technology company, in particular, have taken a more scientific approach to increasing the number of underrepresented inventors in their innovation pipeline. </p><p>The goal of eliciting innovation from all groups and quarters of the company, truly inclusive innovation, meant getting people from underrepresented groups to see themselves as people who file patents. The process commenced with a baseline assessment of the experiences that employees had with the company’s patent process and related staff. As a result of data analytics and employee interviews, the company reshaped how inventors interact with patent staff and resources. It also launched an internal campaign aimed at redefining who is an inventor. </p><p>On a specific level, interviews with minority employees, including those who had filed at least one patent, revealed an unexpected barrier. Part of the language of the invitation to share ideas so that they could be assessed for patentability was offending underrepresented innovators. This language was modified after the initial interviews. </p><p>In this case, the use of the term “harvesting” in reference to gathering ideas was being applied to brainstorming sessions. Many individuals across multiple racial, gender, and ethnic identities were offended by the choice of words and the suggested lack of sensitivity. The true number of inventors who hesitated due to past terminology will remain unknown. However, the shift toward inclusive and belonging language is now captivating and involving everyone.</p><p>Businesses that are innovating to find and patent the next big thing can examine their own systems of gathering ideas from their people. After hearing from their innovators, they will likely make changes to the systems and staff that help their employees file and prosecute patents on behalf of the organization. Internal education processes and peer-to-peer information sharing bolster engagement. But even with everything in place and everyone invited to share their ideas, the language of the invitation can create a barrier.</p><p>Historically, only certain employees have been invited into the mystery of patenting. The broadly accepted idea has been that patenting is for a limited segment of employees. Now, companies are tasked with dismantling the exclusion and elitism they built. This time, their earnings depend on it. </p><p><b>Three takeaways:</b></p><p></p><ol style="text-align: left;"><li>There is a need for inclusive innovation in emerging technologies both ethically and economically. However, involving diverse inventors in large tech companies presents challenges.</li><li>Innovation must be highly inclusive at the outset. To do so, tech companies should have all perspectives involved in the inventing and patenting processes. </li><li>The language of the invitation matters. Historically, only certain employees have been invited to become involved in patenting. The language should not only be inclusive and welcoming in itself but should also be directed towards all potential employees. To do so, companies should dismantle the exclusion and elitism they had built.</li></ol><p></p><p>If you find this insight compelling and want to stay informed on the latest developments, <a href="mailto:diversitypilots@gmail.com">sign up for the DPI research updates today!</a></p>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-57550884628997576652023-09-27T12:55:00.002-04:002023-09-27T12:55:00.146-04:00Guest Post by Jordana Goodman: Unseen Contributors: Rethinking Attribution in Legal Practices for Equity and Inclusion<p><b>Guest Post by <a href="https://kentlaw.iit.edu/law/faculty-scholarship/faculty-directory/jordana-r-goodman">Jordana R. Goodman</a>, Assistant Professor at Chico-Kent College of Law</b></p><p><i>This post is part of a series by the <a href="http://diversitypilots.org/">Diversity Pilots Initiative</a>, which advances inclusive innovation through rigorous research. The first blog in the series is <a href="https://patentlyo.com/patent/2023/04/inventor-diversity-initiative.html">here</a>, and resources from the first conference of the initiative are available <a href="https://law.scu.edu/high-tech-law-institute/innovator-diversity-pilots-conference-schedule/">here</a>.</i></p><p>According to the <a href="https://www.nalp.org/uploads/Research/2022NALPReportonDiversity_Final.pdf">National Association for Law Placement</a>, female equity partners in law firms comprised about 23% of the total equity partner population in the United States in 2022. Women made up more than half of all summer associates and have done so since 2018. Representation among intellectual property lawyers parallels this trend, with women representing about 22% of all equity partners and over 50% of all summer associates in 2019. Although there has been steady progress in hiring women attorneys at junior levels, there have not been similar increases in partner retention in the past thirty years. NALP called the partner level increases “abysmal progress,” and suggested that one reason for this failure is that “little work has been done to examine and change the exclusionary practices that create inequalities.”</p><p>If presence was the only obstacle to creating a more diverse, equitable, and inclusive legal environment, the pipeline of diverse junior associates would have begun to significantly shift the partner demographics at law firms across the country. However, because the environment within a law firm can be unfriendly to non-Caucasian, non-cisgender male, non-heterosexual lawyers, people who identify as such tend to leave legal practice at higher rates. More must be done to remedy inequities within the day-to-day practices to create an equitable legal environment.</p><p>As detailed in my study, <i><a href="https://yjolt.org/ms-attribution-how-authorship-credit-contributes-gender-gap">Ms. Attribution: How Authorship Credit Contributes to the Gender Gap</a></i>, allocation of credit on public-facing legal documents is not equitable. When the senior-most legal team member signs documents on behalf of their legal team, they are erasing the names of associates from the record. This widespread practice, combined with the constant perceived differences in status between male and female colleagues as well as biases related to accents, can lead to negative consequences and unequal attribution for women, people of color, and LGBTQ+ individuals. “Under-attribution of female practitioners falsely implies that women do less work, are more junior, and do not deserve as much credit as their male colleagues” and such practices must change.</p><p><span></span></p><a name='more'></a>Not every attribution decision is a social decision, where a partner has a complete choice to allocate credit to associates within a firm. Government forms and procedures can prevent equitable attribution of all practitioners. For example, the United States Patent and Trademark Office (USPTO) requires applicants to submit paperwork accompanying a patent application, but this paperwork does not allow for equitable attribution of everyone who wrote the patent application.<p></p><p>Specifically, the cover sheet of a provisional patent application prominently features five distinct lines dedicated to naming inventors, with an additional prompt allowing for the inclusion of more inventors on a separate sheet if needed. However, there is a stark contrast when it comes to attributing practitioners; there’s merely one designated line for practitioner correspondence and notably, no space provided to credit practitioners responsible for composing the application. Similarly, the Application Data Sheet (ADS)—a form that accompanies a non-provisional application—initially provides only one line to list a corresponding practitioner. Any additional lines for other practitioners necessitate manual addition, highlighting a consistent limitation in acknowledging multiple contributors in the practitioner field.</p><p>With the exception of solo practitioner-composed applications, most patent applications are written as a collaboration, with both junior and senior practitioners participating in the written exercise. However, due to prevailing norms within law firms, where gender representation disparities are especially pronounced at senior partnership levels, and the social dynamics between junior and senior practitioners, paperwork is more frequently signed by male practitioners than their female counterparts. Not only are women’s names disproportionately concealed from the public record, but also the credit gap increases as attorneys continue to practice. As Figure 1 below shows, of the highly-credited patent practitioners identified from 2016-2020, over 90% were male. </p><p></p><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjda_WSpx_0F8fj-r8PImwPFVm1jhiEXoKJtJ7yVF8UBmhcMeLNvXTIctBVet4iqKByUAs682yz3O4TXB0qr-qMWfVXbx7r0hetUf2pHjquigvDPe_VngEh5xdaqSpPN-5ITA8EiRPmMQ6pcHfFtT8S_j5CAv34mJIiXKfAWV9kRW69Cl9CUCuH2hMv8WlJ/s735/Figure1.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="720" data-original-width="735" height="313" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjda_WSpx_0F8fj-r8PImwPFVm1jhiEXoKJtJ7yVF8UBmhcMeLNvXTIctBVet4iqKByUAs682yz3O4TXB0qr-qMWfVXbx7r0hetUf2pHjquigvDPe_VngEh5xdaqSpPN-5ITA8EiRPmMQ6pcHfFtT8S_j5CAv34mJIiXKfAWV9kRW69Cl9CUCuH2hMv8WlJ/s320/Figure1.png" width="320" /></a></div><p></p><p>The importance of this credit – signatures at the bottom of paperwork accompanying patent applications – should not be underestimated. Credit serves as a reward and incentive for future work, as well as a humanizing function – linking work product “to the reality of human endeavor.” Credit in this context can influence client acquisition, a sense of belonging in the firm, career advancement, and achieving notoriety. Therefore, the USPTO should consider amending their paperwork to ensure teams of practitioners can all receive credit for their contributions to the patent application.</p><p>First, the USPTO could add more signature lines on all patent application paperwork. In addition to corresponding practitioners, practitioners who composed a substantial amount of the patent application could also receive public attribution. The USPTO could expand the forms, such that associates who have not passed the patent bar could still receive credit for their work. Furthermore, the USPTO could compose a bulletin for firms, explaining the importance of credit for associates and showing ways that multiple practitioners could receive credit on office action responses, issue fee sheets, and other documentation. Finally, the USPTO could track attribution to determine if teams are taking advantage of the increased attribution opportunities and if the opportunities increase female attribution and retention. </p><p><b>Three main takeaways:</b></p><p></p><ol style="text-align: left;"><li><b>Persistent Gender Disparities:</b> Despite steady progress in hiring women attorneys at junior levels and women constituting over 50% of summer associates since 2018, there have not been similar increases in partner retention in the past thirty years. Women only hold around 23% of equity partner positions in U.S. law firms, highlighting unaddressed, systemic inequalities and exclusionary practices.</li><li><b>Inequitable Attribution in Legal Documents:</b> The current practice of senior-most legal team members signing documents conceals the contributions of associates, leading to unequal attribution. This under-attribution particularly affects female practitioners, people of color, and LGBTQ+ individuals, implying they do less work and do not deserve as much credit as their male counterparts. This iniquity in credit allocation on public-facing legal documents serves to reinforce gender gaps and hinders career advancement, client acquisition, and a sense of belonging within the firm.</li><li><b>Proposed Amendments to USPTO Procedures:</b> To address inequity, USPTO should revise procedures and forms to facilitate equitable attribution for all patent application contributors and to stress the importance of credit, assessing the impact on attribution and retention dynamics, especially for women.</li></ol><p></p><p></p><p>If you find this insight compelling and want to stay informed on the latest developments, <a href="mailto:diversitypilots@gmail.com">sign up for the DPI research updates today!</a></p>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-21693119966096807292023-08-24T10:00:00.000-04:002023-08-24T10:00:00.143-04:00Guest Post by Suzanne Harrison: Diversity Pledge: Boosting Innovation and Competitiveness<p><b>Guest post by <a href="https://www.linkedin.com/in/suzanne-harrison-105196/">Suzanne Harrison</a>, Chair of the Patent Public Advisory Committee (PPAC) at the USPTO.</b></p><p><i>This post is part of a series by the <a href="http://diversitypilots.org/">Diversity Pilots Initiative</a>, which advances inclusive innovation through rigorous research. The first blog in the series is <a href="https://patentlyo.com/patent/2023/04/inventor-diversity-initiative.html">here</a>, and resources from the first conference of the initiative are available <a href="https://law.scu.edu/high-tech-law-institute/innovator-diversity-pilots-conference-schedule/">here</a>.</i></p><div><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjCo4te_vgH-ycCmwBIa9PRER9wTA6KuOjT6U_g1-twLEQfb3_Ji9e55NK8a9sxJ1Iu04Zc_uNn7J05mM-elIlorvL_HcL403Vy74FslMR9VRG6h_BCCI0D7gWToIgLDTcPHG9Jz6flyyg5pzmda4-dUtnSXlkqWXiR3TVT4xGx7rr0kgFh-1UUlArQIMMx/s618/USIPA.png" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="412" data-original-width="618" height="213" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjCo4te_vgH-ycCmwBIa9PRER9wTA6KuOjT6U_g1-twLEQfb3_Ji9e55NK8a9sxJ1Iu04Zc_uNn7J05mM-elIlorvL_HcL403Vy74FslMR9VRG6h_BCCI0D7gWToIgLDTcPHG9Jz6flyyg5pzmda4-dUtnSXlkqWXiR3TVT4xGx7rr0kgFh-1UUlArQIMMx/s320/USIPA.png" width="320" /></a></div>In July 2021, the USIPA hosted a DEI in innovation conference and launched The Diversity Pledge, alongside 30 founding Pledgee companies who agreed to increase the participation of under-represented inventors (URIs) in their own firms. Currently, over 50 technology companies have committed to the Diversity Pledge from both the US and Europe across a variety of different industries as well as over 25 law firms and consulting firms as pledge supporters. On August 1st, we held the second conference on Increasing Diversity in the Innovation Ecosystem with the USPTO and showcased what companies, law firms, universities, and the USPTO are doing in their respective organizations to increase DEI within inventorship, innovation, and the IP profession. </div><p>When we created the Diversity Pledge, our hope was to create more transparency in innovation and inventorship inclusivity, by creating a standard metric for companies to report on their DEI reports. What we have come to realize however, is that increasing diversity and inclusivity in innovation is not only an equal-opportunity social imperative, it is a common sense means to improve R&D efficiency and corporate ROI, and it is also a necessity for maintaining and increasing national competitiveness. Because we can’t afford to leave our most talented people on the sidelines, the goal must be actionable, not performative.<span></span></p><a name='more'></a><p></p><p>So, two years into this movement, what have we learned? Creating a metric and asking companies to focus on improving it has led them to implement best practices, and to try out a variety of process improvements which have led to substantive changes. Of the 50 Pledgee companies, 30 of them participated in our first round of reporting, as not all of them had been Pledgees long enough to have a full year of data to report. Of the 30 reporting, 17 provided women inventor rates (WIR) for year 1, and 6 provided the WIR rate for year 2. You can see the results in the table below:</p>
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<th class="tg-vu3d"><b><span style="background-color: #4f81bd;"> </span><br /><span style="color: black;">Year 1</span><span style="background-color: #4f81bd;"> </span></b></th>
<th class="tg-vu3d"><b><span style="background-color: #4f81bd;"> </span><br /><span style="color: black;">Year 2</span><span style="background-color: #4f81bd;"> </span></b></th>
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<td class="tg-g2bl"><span style="background-color: #d0d8e8;"> </span><br /><span style="color: black;"># of firms</span><span style="background-color: #d0d8e8;"> </span></td>
<td class="tg-g2bl"><span style="background-color: #d0d8e8;"> </span><br /><span style="color: black;">17</span><span style="background-color: #d0d8e8;"> </span></td>
<td class="tg-g2bl"><span style="background-color: #d0d8e8;"> </span><br /><span style="color: black;">6</span><span style="background-color: #d0d8e8;"> </span></td>
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<td class="tg-w4b7"><span style="background-color: #e9edf4;"> </span><br /><span style="color: black;">Mean</span><span style="background-color: #e9edf4;"> </span></td>
<td class="tg-w4b7"><span style="background-color: #e9edf4;"> </span><br /><span style="color: black;">14.4%</span><span style="background-color: #e9edf4;"> </span></td>
<td class="tg-w4b7"><span style="background-color: #e9edf4;"> </span><br /><span style="color: black;">16.2%</span><span style="background-color: #e9edf4;"> </span></td>
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<td class="tg-g2bl"><span style="background-color: #d0d8e8;"> </span><br /><span style="color: black;">Median</span><span style="background-color: #d0d8e8;"> </span></td>
<td class="tg-g2bl"><span style="background-color: #d0d8e8;"> </span><br /><span style="color: black;">14%</span><span style="background-color: #d0d8e8;"> </span></td>
<td class="tg-g2bl"><span style="background-color: #d0d8e8;"> </span><br /><span style="color: black;">13%</span><span style="background-color: #d0d8e8;"> </span></td>
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<td class="tg-w4b7"><span style="background-color: #e9edf4;"> </span><br /><span style="color: black;">Std. dev.</span><span style="background-color: #e9edf4;"> </span></td>
<td class="tg-w4b7"><span style="background-color: #e9edf4;"> </span><br /><span style="color: black;">7.7</span><span style="background-color: #e9edf4;"> </span></td>
<td class="tg-w4b7"><span style="background-color: #e9edf4;"> </span><br /><span style="color: black;">11.1</span><span style="background-color: #e9edf4;"> </span></td>
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<p><b><i>For Pledgees that reported Year 1 and 2 numbers, there was a 23% increase to the WIR on average.</i></b></p><div>For clarity, Pledgees were not required to report their WIR numbers, but chose to do so. So, for the 6 Pledgees that reported two years of data, we can see that focusing on increasing inclusivity in inventorship for women, led to an average increase of women on patent applications of 23%. For comparison, the US national WIR as determined by the USPTO is 13% so our Pledgees mean WIR in both years 1 and 2 are above the national average. How are companies achieving these results? At the conference, we heard about a number of different things companies are doing. First, mentoring women on the inventorship process and how they can improve their invention disclosure and patent application success rates. Companies are also looking at how to better integrate underrepresented inventors into the innovation process and how to ensure both their voices and ideas are heard and incorporated. Many of these efforts are being piloted by companies, and groups such as the Diversity Pilots Initiative (DPI) are crucial to helping us determine what actually works versus what “seems” to work. Many Pledgees have worked with DPI and have determined what interventions are successful and have allowed us to genericize those efforts and promulgate within Pledgees for continued success. </div><div><div><br /></div><div>Two years ago, companies were focused on having us explain the value they would receive by focusing on inclusivity in inventorship or DEI in general. While we still get occasional questions about this, recent data from both <a href="https://www.gartner.com/smarterwithgartner/diversity-and-inclusion-build-high-performance-teams">Gartner</a> and <a href="https://www.weforum.org/agenda/2019/04/business-case-for-diversity-in-the-workplace">World Economic Forum</a> show that diverse teams within corporations, will exceed their financial targets, and drive a higher average revenue from innovation. For companies this often translates to higher revenue and/or profit, increased employee retention, and lower hiring costs (as potential employees are interested in working for companies that appear more inclusive). But the real value for the nation, comes from increased employment and higher state and national gross domestic product (GDP). This focus on jobs and GDP has caught the attention of both the Department of Commerce (DoC) and the USPTO. Between the DoC and the National Science Foundation (NSF), these two agencies are investing over $1.3 billion in revitalizing America’s innovation ecosystem. Finding out that one can use patent data to help visualize who is and is not participating in our innovation ecosystems, helps us figure out who to include in this process. </div><div><br /></div><div>Additionally, the work Diversity Pledgees are doing is laying the groundwork for how companies, universities, and law firms can make meaningful contributions to not only their own profitability, but also to our national economic and technological success. This point was made crystal clear in the fireside chat with Director Kathi Vidal and Deputy Secretary of Commerce Don Graves at the conference. In my 30 years as an IP practitioner, I cannot recall ever hearing anyone from the DoC talk about the importance of IP and innovation to the economy. While we all intuitively believe that focusing on DEI is the right thing to do, finding out that it can truly help the nation is invaluable. So, if you haven’t started on your DEI journey yet, what are you waiting for? Knowing you can make an impact for both your company and country seems like a no-brainer. </div><div><br /></div><div>Three Key Take-Aways</div><div><ul style="text-align: left;"><li>Immediate Innovation Impact: Pledgee companies focusing on DEI report an average 23% increase in women on patent applications, surpassing the US national WIR.</li><li>National Competitiveness Boost: DEI initiatives, supported by the DoC and USPTO, are highlighted as essential for improving national employment rates and GDP.</li><li>Blueprint for Profitable Inclusion: The Diversity Pledge and collaborations like DPI are helping organizations elevate DEI, enhancing both their profitability and national economic success.</li></ul></div><div>If you find this insight compelling and want to stay informed on the latest developments, <a href="mailto:diversitypilots@gmail.com">sign up for the DPI research updates today</a>!</div></div><div><br /></div>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-55820642891750119912023-08-24T09:31:00.001-04:002023-08-24T09:31:29.437-04:00Guest Post by Professors Aneja, Subramani, and Reshef: Why Do Women Face Challenges in the Patent Process?<p><b>Guest post by <a href="https://www.law.berkeley.edu/our-faculty/faculty-profiles/abhay-aneja/#tab_profile">Abhay Aneja</a>, Assistant Professor of Law, University of California, Berkeley, Diversity Pilots Initiative Researcher, <a href="https://business.lehigh.edu/directory/gauri-subramani">Gauri Subramani</a>, Assistant Professor in the Department of Management, College of Business, Lehigh University and Diversity Pilots Initiative Researcher, and <a href="https://www.orenreshef.com/">Oren Reshef</a>, Assistant Professor of Strategy, Washington University in St. Louis</b></p><p><i>This post is part of a series by the <a href="http://diversitypilots.org/">Diversity Pilots Initiative</a>, which advances inclusive innovation through rigorous research. The first blog in the series is <a href="https://patentlyo.com/patent/2023/04/inventor-diversity-initiative.html">here</a>, and resources from the first conference of the initiative are available <a href="https://law.scu.edu/high-tech-law-institute/innovator-diversity-pilots-conference-schedule/">here</a>.</i></p><p>About 86% of all patent applications are submitted by men or all-male teams. This underrepresentation of women gets worse as the patent approval process runs its course. In other words, patent applications from women and teams with higher female representation are less likely to convert into granted patents. Why is this happening?</p><p>An essential feature of the patent process is that it is highly iterative, so rejection occurs often, as the figure below of the evaluative trajectory of patent applications shows. While over 80% of applications face rejection, it is crucial to note that rejection does not necessarily indicate the impossibility of moving forward with that invention. Applicants can respond to rejections and continue in the patent process. However, research indicates that female patent applicants are less likely to follow up after rejection, contributing significantly to the lower conversion rate of applications to granted patents.</p><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgC_BMoOXNaF8ixJv7-8Molo1sO35ou1jQkDQqSccgIZ50RUjQc4CBRZr9rpQAEDqMFb8G_D_K7hXqhYhwEDwVfz-ppQHxEEkYUP9scoPC3SQ4uVD_SKPjihqZu6rH4wV5VIM4y_JzYLZbJYn2_vxeUJ8zGOZnBggqZiQHe0LkEOCl1svqO3eaJUvY9ndJ6/s1062/patentgender.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="754" data-original-width="1062" height="227" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgC_BMoOXNaF8ixJv7-8Molo1sO35ou1jQkDQqSccgIZ50RUjQc4CBRZr9rpQAEDqMFb8G_D_K7hXqhYhwEDwVfz-ppQHxEEkYUP9scoPC3SQ4uVD_SKPjihqZu6rH4wV5VIM4y_JzYLZbJYn2_vxeUJ8zGOZnBggqZiQHe0LkEOCl1svqO3eaJUvY9ndJ6/s320/patentgender.png" width="320" /></a></div><p></p><p><span></span></p><a name='more'></a>A potential approach for overcoming female tendencies not to push forward or fight in response to rejection relates to whether the patent applications are affiliated with attorneys or firms. When applications are affiliated with firms, the process is typically managed by patent committees comprised of specialized experts, such as patent attorneys, who have lots of experience determining whether proposed ideas can be patented. Not only can these experts craft applications strategically, but they can also manage communications with patent examiners. For instance, they may help with responding to a rejection.<p></p><p>Although it is no surprise that both men and women benefit from the support of patent professionals, interestingly, female applicants derive much more significant gains than men from firm and attorney affiliations. This suggests that access to information and financial resources provided by firms and attorneys is particularly valuable for female patent applicants, potentially compensating for lower response rates to rejection and the other barriers women commonly face before applying for a patent (e.g., limited professional networks). However, the proportion of male inventors affiliated with firms or attorneys is higher than that of female inventors.</p><p>The underrepresentation of women in the field of innovation has far-reaching implications for our society. We are losing the opportunity to benefit from valuable contributions and perspectives just as much as the underrepresented population in innovative activities. From a macroeconomic perspective, this is a significant loss of potential economic growth. However, while the underrepresentation of women hurts society overall, it hurts women the most.</p><p>Research demonstrates that women are more likely to develop innovations that serve the needs of other women. For instance, the first disposable diaper was created by a mother, who herself was exposed to the issue many other women also face. Therefore, if female inventors are underrepresented, women more broadly are underserved because the innovations that may serve women's specific needs are less likely to exist. Also, participation in innovation leads to individual-level benefits. Patents enable inventors to commercialize their inventions, benefit from increased wages, and enhance their employability. Women are obstructed from the opportunity to have access to these tangible pecuniary benefits.</p><p>The underrepresentation of women in the patent process is a critical issue that needs our attention. It is easy to think that women who apply for patents are probably more resistant to negative feedback because they’re already a highly self-selected group who have persisted in their endeavors against many obstacles. However, this is not necessarily true. A robust body of research illustrates that demographics are important in career choices and trajectories. Children born into the wealthiest 1% of society are ten times more likely to be inventors than those born into the bottom 50%. Female college graduates are much less likely to transition to STEM jobs. Even if female students eventually enter those fields, female academics and scientists are less likely to patent than male academics and scientists, partially due to their limited professional networks.</p><p>Also, the small proportion of women who do end up participating in innovation are often disadvantaged by biased evaluations of their accomplishments and capabilities as compared to similarly qualified men. These hurdles throughout the process inhibit women from becoming scientists or participating in innovation. It is crucial to address these challenges at each stage of the pipeline with interventions such as providing better access to information and free legal representation. By recognizing and tackling these obstacles, we can foster a more inclusive and supportive environment for women in innovation.</p><p>Measures such as improving access to information, providing free legal representation, and dismantling gender biases in evaluations can advance diversity in innovation. More representation of women in the field will not only foster economic growth but also lead to innovations that cater to the diverse needs of our world. I urge you to join our efforts to support women and bridge the gender gap in innovation.</p><p><a href="mailto:diversitypilots@gmail.com">Sign up for the DPI research updates</a>.</p>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-74487802590520788342023-07-12T23:16:00.001-04:002023-07-12T23:16:43.788-04:00Guest Post by Prof. Koffi: A Gender Gap in Commercializing Scientific Discoveries<p><b>Guest post by <a href="https://sites.google.com/view/marlenekoffi/">Marlene Koffi</a>, Assistant Professor of Economics, University of Toronto and NBER Faculty Research Fellow. This post is part of a series by the <a href="http://www.diversitypilots.org/">Diversity Pilots Initiative</a>, which advances inclusive innovation through rigorous research. The first blog in the series is <a href="https://patentlyo.com/patent/2023/04/inventor-diversity-initiative.html">here</a> and resources from the first conference of the initiative are available <a href="https://law.scu.edu/high-tech-law-institute/innovator-diversity-pilots-conference-schedule/">here</a>.</b></p><p></p><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEioFQN33fptbftHGVzOv-DIYbYafWYJHU1ehlnqTwVthaghPWKKmIDNeWJqaga2x7GX5YpEhRFkA8O_qtF3n8_NU6mV6llOh-KuGANMnNYDQF7SRyNFI2n999-lXtOfDObaol-OFxOypvlWUP1aeevKEQvEUsw2XwoiJTlxATq4cPrWaJQ8ZXysZQG2XyvM/s454/Koffi.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="454" data-original-width="360" height="200" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEioFQN33fptbftHGVzOv-DIYbYafWYJHU1ehlnqTwVthaghPWKKmIDNeWJqaga2x7GX5YpEhRFkA8O_qtF3n8_NU6mV6llOh-KuGANMnNYDQF7SRyNFI2n999-lXtOfDObaol-OFxOypvlWUP1aeevKEQvEUsw2XwoiJTlxATq4cPrWaJQ8ZXysZQG2XyvM/w159-h200/Koffi.png" width="159" /></a></div><br />Diversity and inclusion in science and commercialization are integral to innovation, societal and economic growth. While progress has been made in increasing representation and inclusivity in STEM, there are complex factors at play that hinder a comprehensive understanding of the barriers faced by underrepresented groups in these fields. Today, I will focus on a challenging point later in the invention process: commercializing a scientific discovery. In a research study with Matt Marx, we characterize the gender dynamics of scientific commercialization in the full canon of scientific inquiry.<p></p><p>One of the highlights of our study is to show that, as a society, we have made lots of progress regarding gender balance in the early steps of the scientific production process. Analyzing 70 million scientific articles, we observe meaningful growth in female participation in scientific production. In 1980, barely one in five published papers included a female author. By 2020, that figure exceeded 50%. This increase represents a significant cultural shift in the scientific community. Diversity in science has been shown to stimulate innovation and promote higher recognition within the academic community. This is a win not just for the women involved but for the whole of society.</p><p>However, these gains for women early in scientific production hide potential pitfalls later. Namely, the key takeaway of our study is that <i>a significant gender gap remains for commercializing scientific discoveries</i>. Given that we find the gender gap in commercialization is the largest among discoveries that are more highly cited and with higher commercial potential, we title our study and refer to these uncommercialized discoveries as “<a href="https://www.nber.org/papers/w31316">Cassatts in the Attic</a>” after the renowned female painter and printmaker Mary Cassatt.<span></span></p><a name='more'></a><p></p><p>What are the underlying reasons behind this gap? For instance, it could be that the investors financing early commercialization efforts are biased against women or that women have limited social networks to help move their scientific discovery to the next stage. While we explored several potential explanations, we found limited evidence that these supply-side factors alone could explain the gap. Instead, our findings indicate that the gender gap predominantly emerges in commercialization efforts conducted in collaboration with existing firms, pointing towards a potential bias from the firm side.</p><p>Now, let us consider the relevance of these findings to society.</p><p>At its core, the underrepresentation of women in the commercialization of scientific discoveries represents an enormous loss of potential. Women are leading innovative research projects, producing highly cited scientific papers, and making substantial contributions to the research community. Yet, their discoveries are often left “in the attic,” uncommercialized and underutilized, suggesting a possible waste of human and intellectual resources. These “Cassatts in the Attic,” represents missed opportunities to enhance societal welfare and economic prosperity.</p><p>This research also shows that the gender gap in commercialization is not just a women’s issue; it is an issue that affects all of us. In fact, it might stifle innovation, limit economic growth, and prevent society from fully benefiting from the contributions of half its population. So, it is essential to remember to promote inclusivity and diversity in all stages of the invention process and extend our efforts beyond the early stages of recruiting and training new STEM talent. We also must help those diverse voices in the critical process of commercializing scientific discoveries. This collective effort should involve all stakeholders, including government, firms, investors, universities, and scientists themselves.</p><p>Brilliant minds surround us from all types of backgrounds (gender, race, socio-demographic,…), possibly holding valuable insights that have the potential to shape our world. However, it is our responsibility to ensure that these ideas are not confined and hidden away but brought into the light where they can truly make a difference.</p><p><a href="mailto:diversitypilots@gmail.com">Sign up for the DPI research updates</a>.</p>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-34174050622417875462023-06-28T11:40:00.001-04:002023-06-28T11:40:42.947-04:00Guest Post: Closing the Gender Innovation Gap with Guided Inventor Sessions<p><b>By: Kevin Ahlstrom, Associate General Counsel, Patents, Meta </b></p><b>(This post is part of a series by the <a href="http://diversitypilots.org/">Diversity Pilots Initiative</a>, which advances inclusive innovation through rigorous research. The first blog in the series is <a href="https://patentlyo.com/patent/2023/04/inventor-diversity-initiative.html">here</a>, and resources from the first conference of the initiative are available <a href="https://law.scu.edu/high-tech-law-institute/innovator-diversity-pilots-conference-schedule/">here</a>.)</b><div><b><br /></b><div><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhsRkdSCjIO9AqRMa2-KThYntT1WaZaIg5bR7cUYXf_LE8WDJjscnFSf0YGlAmgkhBdCR13X7xwIQrFjqbrE-hVAAeEcZdANx-bAvZRkqSLXroGx2OvCDetRHm-IZ0HNwFwLovs17uDVqUmyWkTqebT1J5CppRUbgLWrBFJNH_dwiZU6DLl5IvlMIHYUG0b/s204/Picture1.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="204" data-original-width="204" height="204" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhsRkdSCjIO9AqRMa2-KThYntT1WaZaIg5bR7cUYXf_LE8WDJjscnFSf0YGlAmgkhBdCR13X7xwIQrFjqbrE-hVAAeEcZdANx-bAvZRkqSLXroGx2OvCDetRHm-IZ0HNwFwLovs17uDVqUmyWkTqebT1J5CppRUbgLWrBFJNH_dwiZU6DLl5IvlMIHYUG0b/s1600/Picture1.png" width="204" /></a></div><p><i>Guided invention sessions not only increase idea submission rates but also transform individuals' perception of themselves as inventors. By creating a supportive environment and equipping participants with the necessary tools, these sessions pave the way for gender equality in patenting.</i></p><p><b>Women submit ideas for patenting at a lower rate than men</b></p><p>In 2021, I noticed that most of the ideas I received for patenting came from men. At Meta, employees are encouraged to submit patent ideas through an inventor portal. Women submitted less than 10% of the ideas I received, despite making up more than 30% of the technical and design roles in the organizations I supported. I was chatting with a research scientist about this, and I asked her why she didn’t submit more of her ideas for patenting. She said, “I tend to minimize my contributions compared to others on my team. I sometimes think that the big patentable ideas are for people above my paygrade.” </p><p>Another female UI designer said, “We are all often working on things with many other people, and so it can feel presumptuous to claim ‘ownership’ over an idea. Vying for credit can bring up yucky shame feelings in me when I have been trained by our culture to make people happy, to support others, to help.”</p><p>I realized there were stark differences between the way that I, a male patent attorney, and many of my female coworkers view the invention process and related work. There are likely many causes for this engagement gap: </p><p></p><ul style="text-align: left;"><li>differences in social expectations between men and women; </li><li>fewer historical female inventor role models;</li><li>women may be implicitly penalized for claiming ownership and credit;</li><li>women often take on the unpaid labor of home and childcare responsibilities, leaving less time or energy for patent activities.</li></ul><p></p><p>Regardless of the cause, it was clear that I could not rely solely on our inventor portal to capture women-generated innovation.</p><p>As my team and I searched for solutions, I initially wanted to hold training sessions for women on how to submit and advocate for their ideas. That’s what the men did – they submitted frequently and argued with me frequently; consequently, I approved more of their ideas for patenting. But why should we train women to act more like men? It didn’t make sense to ask women to change their behavior to fit inside a system that wasn’t designed for them. Instead of more training, we needed a change in our system to meet innovators where they were.</p><p>The Patent Team at Meta has been working on this issue for years. Together, we have made large strides in creating a patent program that is equitable and accessible to everyone. We’ve surveyed employees to better understand their needs, we’ve revamped our inventor portal to be more inclusive, we’ve held conferences and forums to spotlight diverse inventors and encourage other companies to improve, and much more. <span></span></p><a name='more'></a><p></p><p><b>Our Pilot: how to double women’s idea submission rate with guided invention sessions</b></p><p>A main component of our efforts has been implementing guided invention sessions for underrepresented inventors. Before I explain how to run one, I just want to say that guided invention sessions work. <i>During the months in which we initially implemented these sessions, I saw the invention submission rate from women more than double: among orgs I support, ideas coming from women rose from less than 10% to 22%.</i> Not quite the 30% needed for gender parity, but this is significant progress.</p><p>Here’s how it works. We model the guided invention sessions after the <a href="https://www.designmethodsfinder.com/methods/method-635">6-3-5 Brainwriting Method</a>, which is a proven way to come up with lots of ideas in an hour or less. Here’s a quick breakdown of the process:</p><p></p><ul style="text-align: left;"><li>5-7 participants gather to ideate around a single problem. The problem can be anything, but ideally should encourage patentable ideas that align with company goals. </li><li>The sessions consist of two meetings, each lasting one hour. At the first meeting, participants brainstorm using the 6-3-5 method. This can be done in-person on sheets of paper or virtually using a remote collaboration tool like Google Sheets, Slides, or Figma. </li><li>The first meeting is broken up into multiple 5-8 minute segments where participants use the collaboration tool to write solutions to the problem. </li><li>At the end of each 5-8 minute segment, papers are passed and a new segment begins. Each participant can either write down new ideas or build on the existing ones from previous segments.</li><li>At the end of this first 60-minute meeting, the group will have generated 40-60 solutions to the problem.</li></ul><p></p><p>Between the first and second meeting, a patent attorney reviews the ideas and selects the most patentable ideas for further discussion. At the second meeting, the group discusses 2-4 of the selected ideas to build on. I encourage as much detail as possible in this meeting, so that by the end we have enough detail to begin drafting one or more patent applications. </p><p>In terms of cadence, we have found that doing guided invention sessions once per half produces strong patents, gives inventors something to look forward to, and avoids putting too much burden on patent counsel.</p><p><b>Conclusion: help people become confident and comfortable with patents</b></p><p>In my opinion, the most remarkable result of these sessions has been the inventor transformation. Session participants realize what it takes to generate a patentable idea, and after participating in the process, they are much more likely to become repeat inventors. After attending her first guided inventor session, the research scientist who thought patents were above her paygrade has since submitted 16 ideas for patenting and has 6 patent applications to her name. </p><p>Another participant said, “I didn’t know I was an inventor until I attended this workshop.” </p><p>Just to drive the point home: guided invention sessions immediately boost the idea rate coming from underrepresented inventors. Participants find the sessions fulfilling and leave confident and excited to patent their innovations. </p><p><a href="mailto:diversitypilots@gmail.com">Sign up for the DPI research updates</a></p><p><b>Three main takeaways:</b></p><p></p><ol style="text-align: left;"><li>A variety of societal expectations and gender norms has resulted in a significant disparity in patent idea submissions between men and women.</li><li>Guided invention sessions have proven to be a game-changer in boosting idea submissions from underrepresented inventors. By providing a structured and inclusive platform for brainstorming, these sessions empower women and other underrepresented inventor groups to participate confidently in the patenting process.</li><li>Guided invention sessions not only increase idea submission rates but also transform individuals' perception of themselves as inventors. By creating a supportive environment and equipping participants with the necessary tools, these sessions pave the way for gender equality in patenting.</li></ol><p></p><div><br /></div></div></div>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-15493473032889625872023-06-14T16:47:00.001-04:002023-06-14T16:47:21.779-04:00Guest Post: How We Can Bridge the Innovation Gap<p><b>By: <a href="https://law.wfu.edu/faculty/profile/robinswk/">W. Keith Robinson</a>, Professor of Law, Faculty Director for Intellectual Property, Technology, Business, and Innovation, Wake Forest University School of Law. Watch his video proposing a <a href="https://santaclarauniversity.hosted.panopto.com/Panopto/Pages/Viewer.aspx?id=84f76d40-78cc-4cfa-90d1-af31017d9e44&start=14622">Law and Technology Pipeline Consortium</a>.</b></p><p></p><b><i>This post is part of a series by the <a href="http://diversitypilots.org/">Diversity Pilots Initiative</a>, which advances inclusive innovation through rigorous research. The first blog in the series is <a href="https://patentlyo.com/patent/2023/04/inventor-diversity-initiative.html">here</a>, and resources from the first conference of the initiative are available <a href="https://law.scu.edu/high-tech-law-institute/innovator-diversity-pilots-conference-schedule/">here</a>.</i></b><div><b><i><br /></i></b><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhTMSeT15TNFt9nOYxEB42zqihxSS0c3ELyY-IA95UIQq0-5sa2Cew3GE5Fg2Eh-VnAEvv5yA70ObAYN-6EmbnoQi2KwsZcFCrZRn_27gUjILriUKuQPlNHgUFma9AgiQN5fhm_6FOCodS2qYInXk12_90VViM21jOZRFNfIE6BeGf-oU3XIBrtOYVh8g/s275/Robinson.png" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="218" data-original-width="275" height="218" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhTMSeT15TNFt9nOYxEB42zqihxSS0c3ELyY-IA95UIQq0-5sa2Cew3GE5Fg2Eh-VnAEvv5yA70ObAYN-6EmbnoQi2KwsZcFCrZRn_27gUjILriUKuQPlNHgUFma9AgiQN5fhm_6FOCodS2qYInXk12_90VViM21jOZRFNfIE6BeGf-oU3XIBrtOYVh8g/s1600/Robinson.png" width="275" /></a></div><p></p><p>The patent system is a foundational part of the United States’ innovation ecosystem. The country created a national patent system in 1789. While the patent system has evolved over 200 years, it has remained stagnant in one glaring way. The number of inventors and patent professionals that are women or belong to underrepresented racial and ethnic groups is alarmingly low as compared to white men. While this disparity raises concerns about inclusivity, it also raises the possibility that there are untapped reservoirs of creativity and innovation within our borders. </p><p>For example, a <a href="https://itif.org/publications/2016/02/24/demographics-innovation-united-states/">2016 study by the Innovation Technology and Innovation Foundation</a> revealed that 3.3% of U.S.-born innovators identified as Hispanic, and 0.4% of U.S.-born innovators identified as black or African American. The same study found that women represent just 12% of U.S.-born innovators. These numbers might seem staggering to some. Others might genuinely ask why these numbers should raise concerns. </p><p>One need look no further than the changing demographics of the U.S. <a href="https://apnews.com/article/race-and-ethnicity-census-2020-7264a653037e38df7ba67d3a324fc90d">Census data from 2020</a> indicate that the share of the U.S. population that identifies as White has declined for several decades. The U.S. is becoming more diverse, and it seems this trend will continue. In Peter F. Drucker’s book, Innovation and Entrepreneurship, Drucker argues that demographics are the clearest external source of innovative opportunity. Underrepresented innovators tend to address overlooked problems that are inherent to their communities. The country’s changing demographics could provide a wealth of untapped innovative opportunities.</p><p>The question then, is what is the cause of the demographic disparity in the patent system, and how can we address it? <span></span></p><a name='more'></a><p></p><p>In his book, <i>Black Inventors in the Age of Segregation</i>, <a href="https://www.rayvonfouche.com/">Rayvon Fouché</a> identifies three primary factors that historically hindered black innovation – (1) limited personal networks; (2) lack of access to legal information and advice; and (3) scarcity of capital. These factors remain challenges for underrepresented groups today. Addressing these challenges, particularly the second, could help increase the number of inventors from underrepresented groups.</p><p>As part of my educational and research mission, I am working to build partnerships with government agencies, undergraduate universities, law schools, and corporations to bridge the representation gap in patent-related careers. This proposed consortium seeks to accomplish three primary objectives:</p><p>1. Increase the number of patent agents that identify as belonging to an underrepresented racial or ethnic group.</p><p>2. Foster informed inventors that identify as belonging to an underrepresented racial or ethnic group.</p><p>3. Increase the number of patent attorneys in the United States that identify as belonging to an underrepresented racial or ethnic group.</p><p>To accomplish these objectives, the consortium will need to build a robust and accessible IP curriculum. The consortium will work with selected universities, particularly Historically Black Colleges and Universities (HBCUs) with strong engineering and scientific programs. The program will also collaborate with law schools in areas near these universities. This strategy will create a robust pipeline for underrepresented students to gain valuable insight into intellectual property and the patent process early in their academic journey.</p><p>What will the U.S. innovation landscape look like if we can accomplish these objectives? Underrepresented populations may have greater access to legal assistance. With this access, more ideas can become viable inventions, furthering the collective innovative potential of the country. Further, employees from underrepresented groups will have a better understanding of how their innovative contributions can be exploited. This may lead to greater innovative activity within firms. </p><p>These goals may seem ambitious and costly. However, the costs and resources needed to increase diversity in the patent system should be seen as an investment that can yield significant dividends in the long run. There are potentially significant economic and societal gains that could be realized from a more diverse and inclusive patent system. Diverse teams have been shown to be more innovative and creative, bringing a wider range of perspectives and problem-solving approaches to the table. One law firm that has made significant investments in this area is Schwegman Lundberg & Woessner. Their <a href="https://www.slwip.com/slw-academy/">SLW Academy</a> is a free educational resource that provides “practical instruction and opportunities to students who are traditionally underrepresented in intellectual property.” </p><p>Another concern is that such initiatives will cause people to be hired or promoted based on their sex, racial or ethnic background rather than their qualifications and experience. This perspective fails to consider the systemic barriers (many of which Fouché discusses) that have prevented underrepresented groups from participating fully in the patent law profession. I am not advocating for the hiring of underqualified individuals for the sake of diversity. Instead, I seek to create opportunities for individuals who, due to systemic issues, might not have had the chance to fully demonstrate their potential.</p><p>Closing the disparity gap in patent law and innovation will not happen overnight, nor will it be an easy task. However, the consortium offers a feasible and promising roadmap. By providing underrepresented groups with the necessary resources and opportunities, we can stimulate innovation, increase economic productivity, and foster an innovation ecosystem that truly reflects the diversity of the United States. If we are to believe that innovation knows no gender or color; it is time our profession reflected the same.</p><p>Help us shape a more inclusive future in patent law and innovation. If you are a member of a government agency, a university, a law school, a corporation, a law firm, or an individual committed to bridging the representation gap in patent-related careers, we'd love to collaborate. Let's work together to build a more robust pipeline for underrepresented students and unleash untapped innovative potential within our country.</p><p><a href="mailto:diversitypilots@gmail.com?subject=SUBSCRIBE">Sign up for our research updates</a>.</p></div>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-84133970844098091392023-05-31T09:59:00.000-04:002023-05-31T09:59:29.441-04:00Guest Post: Charting New Paths in Innovation: Reflections from Harvard’s Innovation Economics Conference<p><b>By: Jillian Grennan, Associate Professor of Finance and Principal, Diversity Pilots Initiative</b></p><p><b><i>This post is part of a series by the <a href="http://diversitypilots.org/">Diversity Pilots Initiative</a>, which advances inclusive innovation through rigorous research. The first blog in the series is <a href="https://patentlyo.com/patent/2023/04/inventor-diversity-initiative.html">here</a>, and resources from the first conference of the initiative are available <a href="https://law.scu.edu/high-tech-law-institute/innovator-diversity-pilots-conference-schedule/">here</a>.</i></b></p><p></p><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiMA-4-ti8cotpSNSPl_7bvJHNnE0S1Z5u_0WCR_BEhFj6bwY6TJyXTnxXxcOHkRYrZE7qXZpjtjxX4IFd9LdFfZd--HcTCmBITUatEBcQv9g-d2OntgaA1-1HWEW8IYJLHMIBrPlNDyRyxAHYbjfFkSsq3tgL_AuHPUlSiUW-xr4XzRp79anMCXaAyOw/s706/InnovationEcon.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="531" data-original-width="706" height="241" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiMA-4-ti8cotpSNSPl_7bvJHNnE0S1Z5u_0WCR_BEhFj6bwY6TJyXTnxXxcOHkRYrZE7qXZpjtjxX4IFd9LdFfZd--HcTCmBITUatEBcQv9g-d2OntgaA1-1HWEW8IYJLHMIBrPlNDyRyxAHYbjfFkSsq3tgL_AuHPUlSiUW-xr4XzRp79anMCXaAyOw/s320/InnovationEcon.png" width="320" /></a></div><br />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.<span><a name='more'></a></span><p></p><p><a href="https://brittaglennon.com/">Britta Glennon</a>, a researcher exploring the interaction between diversity and corporate strategy, shed new light on the well-documented fact that women publish and patent less than men. The reasons behind these gender disparities remain largely unknown. Could it be an unsupportive work environment, family obligations that take precedence, or simply less productive time use? Britta and her team propose a different angle: that women's work is often undervalued; hence, female inventors are being deprived of rightful recognition. </p><p>Backed by terrific data collection, ranging from large-scale administrative data to surveys and qualitative responses, Britta made a compelling case that this alternative perspective merits our attention.</p><p>The evidence shows women are less frequently credited as authors on articles and patents, a pattern echoing historical instances like Rosalind Franklin's unacknowledged work on the DNA structure and Jennifer Doudna's worries about diminished recognition in the CRISPR development. It’s important to recognize that such biases might have inadvertently hidden countless female contributions over the years, possibly deterring many from pursuing a scientific career. In fact, the crux of this research is that women, across nearly all scientific fields and career stages, are significantly under-credited compared to their male counterparts, indicating an attribution bias. This discovery is especially important because it tells us that overcoming any female productivity deficit requires both the removal of barriers to accomplishment as well as proper attribution.</p><p>In that sense, Britta’s work on attribution related to my own research with <a href="https://sites.google.com/view/colleenchien/?pli=1">Colleen Chien</a>, examining engineers' views on patenting. We discovered that while women are less likely to self-identify as inventors, both genders equally identify as problem-solvers. Could this imply traditional invention disclosure processes that require proactive inventor identification deter women? To probe this further, we implemented three pilot studies within firms, focusing on the impact of opt-out (default participation) vs. opt-in (active selection) systems on patenting disparities. Our findings suggest that, even when accounting for the inventive idea's quality, altering the invention disclosure process to emphasize default participation can make a significant difference in participation rates for women and first-time inventors.</p><p>Another compelling presentation was delivered by <a href="https://www.tamaroostrom.com/">Tamar Oostrom</a>, who, alongside <a href="https://www.jennifer-kao.com/">Jennifer Kao</a>, is exploring innovation in healthcare markets. They reveal the glaring disparities between clinical trial enrollees and actual disease sufferers in terms of demographic characteristics. For instance, clinical trials for melanoma - a disease predominantly affecting older adults - often enroll much younger patients. By examining expansions in public insurance coverage for clinical trials, they demonstrate how reducing the financial frictions that inhibit enrollment leads to more representative enrollments in terms of age, race, and gender. More importantly, their work raises the question: Can more representative enrollments in clinical trials enhance drug effectiveness and medication adherence? If reducing the costs and hurdles associated with clinical trial enrollment can improve health outcomes, the case for expanding insurance coverage for such trials becomes stronger.</p><p>As the conference drew to a close, I was deeply inspired by my fellow scholars' dedication and the important implications of our collective work. The key takeaways from this event for business and public policy are clear: We need to recognize and value women's contributions to scientific innovation, ensure clinical trials are representative to avoid distorting health outcomes and consider opt-out mechanisms, where the default expectation is participation, to bridge the innovation gap for underrepresented groups. </p><p>The challenges tied to racial and gender equality in intellectual property development are substantial, but the insights from the conference reiterate the power of our collective effort to better understand the mechanisms at work and suggest how business and society can better gain from the innovative potential of everyone. I left feeling thankful for all the support that the other young scholars and I had received to make our own research possible.</p><p>The dialogue at the conference also affirmed that academic-practitioner collaborations work and hold great promise for the future. I encourage those who can to consider initiating their own diversity pilots - it's a win-win situation. Researchers from the <a href="http://diversitypilots.org/">Diversity Pilots Initiative</a> are happy to help you with this. We have expertise in econometric, observational, survey, and other empirical methods and are well-versed in topics from mentoring to inequality in innovation to government policy. And please stay tuned for further updates by emailing us and signing up for <a href="mailto:diversitypilots@gmail.com">DPI research updates</a>.</p>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-53038076357032180482023-05-26T00:41:00.002-04:002023-05-31T09:56:05.049-04:00Guest Post: Bridging the Gap: IP Education for All with SLW Academy<p><b>By: <a href="https://www.linkedin.com/in/piers-a-blewett-506a8420/">Piers Blewett</a>, Principal at Schwegman Lundberg & Woessner (SLW)</b></p><p><b><i>This post is part of a series by the <a href="http://diversitypilots.org/">Diversity Pilots Initiative</a>, which advances inclusive innovation through rigorous research. The first blog in the series is <a href="https://patentlyo.com/patent/2023/04/inventor-diversity-initiative.html">here</a>, and resources from the first conference of the initiative are available <a href="https://law.scu.edu/high-tech-law-institute/innovator-diversity-pilots-conference-schedule/">here</a>.</i></b></p><p>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.</p><p>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.</p><p>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. </p><p>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. </p><p><span></span></p><a name='more'></a>The SLW Academy is a platform designed to democratize access to IP education and mentorship, especially for underrepresented communities. Our objective isn't just to impart skills, but to genuinely care for our students, nurturing them in their pursuit of an IP career. We hope to empower students and help them become dynamic, proficient members of the intellectual property community by offering practical advice, useful real-world skills, and a certification to assist in resume building. The SLW Academy’s courses are free, online, and available to stream at the student’s convenience.<p></p><p></p><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjHu62AhToajP6erGl5VZo-mCu27Zq_QG1gEGM3nutSc8BwcHpzBHwA5arRzeej30VT7wfYaARW8CHgtrmZxHqviofptiw7IbZsdeu4Vv2YmxRc8ejGntbI10oljNvLsq4_qm7TouWO_N1OV2ZYbk15bxj-4cZpMr5YXg3v0A5OHPlPgWzuv0vfQm9JlA/s897/Picture1.png" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="504" data-original-width="897" height="180" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjHu62AhToajP6erGl5VZo-mCu27Zq_QG1gEGM3nutSc8BwcHpzBHwA5arRzeej30VT7wfYaARW8CHgtrmZxHqviofptiw7IbZsdeu4Vv2YmxRc8ejGntbI10oljNvLsq4_qm7TouWO_N1OV2ZYbk15bxj-4cZpMr5YXg3v0A5OHPlPgWzuv0vfQm9JlA/s320/Picture1.png" width="320" /></a></div><br />At the heart of the SLW Academy’s mission is the aspiration to engage students from various fields of interest and at different stages in their education. Our focus extends to three key groups, each with distinct needs and potential:<p></p><p></p><ol style="text-align: left;"><li>High School Students: Recognizing the importance of early exposure, we extend an invitation to high school students interested in law, science, or engineering to embark on a career path in Intellectual Property. By providing them with practical instruction and mentorship, the SLW Academy helps them explore their passions and develop a strong foundation.</li><li>Undergraduate Students, Graduate Students, and Professional Engineers: The SLW Academy tailors programs for students pursuing or holding degrees in engineering, science, or mathematics. Students at this level are introduced to the intersection of law and science.</li><li>Law Students and Graduates: The SLW Academy provides a bridge between legal theory and practice for both practicing lawyers and law students, empowering these individuals to enter the field of Intellectual Property law with confidence.</li></ol><p></p><p>Historical barriers such as availability of IP-centric education or availability of mentors can be overcome at least in part through the SLW Academy. In acknowledging the individuality of each student’s journey, the SLW Academy facilitates mentorship opportunities between students interested in Intellectual Property and practitioners in the field by inviting students to engage with the material and the presenters. Guidance on a variety of careers is provided from presenters who work throughout the field. </p><p>We urge other law firms and engineering departments to join us in promoting inclusivity. The benefits of diversity are manifold, and it is crucial that we work together to ensure every voice contributes to our collective progress.</p><p>Please visit the <a href="https://slwacademy.com/">SLW Academy</a> website to learn more about our mission. We encourage you to share the SLW Academy with others. Together, we can make a difference.</p><p>Watch Piers’ presentation on the SLW Academy during the <a href="https://santaclarauniversity.hosted.panopto.com/Panopto/Pages/Viewer.aspx?id=84f76d40-78cc-4cfa-90d1-af31017d9e44&start=20189">Diversity in the Profession and Pipeline session</a> at the fall 2022 Diversity Pilots Conference hosted at Santa Clara University (<a href="https://law.scu.edu/wp-content/uploads/19.-Blewett.pdf">slides</a>), and sign up for the <a href="https://slwip.zoom.us/webinar/register/WN_qX786C57SKa2w4GLR5qXVA#/registration">SLW Academy webinar taking place on June 20, 2023</a>.</p><p><a href="mailto:diversitypilots@gmail.com">Sign up for DPI research updates</a></p>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-37894948032845284012023-05-24T10:35:00.001-04:002023-05-31T09:56:03.052-04:00All Together Now: Highlights from the First Innovator Diversity Pilots Conference<p><b>Guest Post by <a href="https://law.emory.edu/faculty/faculty-profiles/bagley-profile.html">Margo A. Bagley</a>, Asa Griggs Candler Professor of Law, Emory University School of Law, co-inventor, and Principal, Diversity Pilots Initiative. Watch her video for <a href="https://inventtogether.org/">Invent Together</a>, entitled <a href="https://www.youtube.com/watch?v=FP6RCNRGKw4">Challenges Encountered as a Diverse Inventor</a>.</b></p><p><b><i>This post is part of a series by the <a href="http://diversitypilots.org/">Diversity Pilots Initiative</a>, which advances inclusive innovation through rigorous research. The first blog in the series is <a href="https://patentlyo.com/patent/2023/04/inventor-diversity-initiative.html">here</a>, and resources from the first conference of the initiative are available <a href="https://law.scu.edu/high-tech-law-institute/innovator-diversity-pilots-conference-schedule/">here</a>.</i></b></p><p>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 <a href="https://law.scu.edu/high-tech-law-institute/innovator-diversity-pilots-conference-schedule/">here</a>.) 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. </p><div class="separator" style="clear: both; text-align: center;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhpt5ktJnKOgh4qHUYBU1WHe1DLVafwPQbG8RrlrxVxFwSBvyYIa6XVQqr0B7kr-JLgyQVwNIxaC7Huhoua7U5WMj7pai9f6E9piw_GGWIC1EdG7GJVbpeU7A_TYTkb1kZhgzVvpCtyEVo-046PvCzsBepx_taJGf_p5txjUV3o_46ATl-tn-2XsPSjtQ/s327/Bagley.png" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="270" data-original-width="327" height="264" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhpt5ktJnKOgh4qHUYBU1WHe1DLVafwPQbG8RrlrxVxFwSBvyYIa6XVQqr0B7kr-JLgyQVwNIxaC7Huhoua7U5WMj7pai9f6E9piw_GGWIC1EdG7GJVbpeU7A_TYTkb1kZhgzVvpCtyEVo-046PvCzsBepx_taJGf_p5txjUV3o_46ATl-tn-2XsPSjtQ/s320/Bagley.png" width="320" /></a></div><br /><a name='more'></a>According to the <a href="https://www.uspto.gov/ip-policy/economic-research/publications/reports/progress-potential">USPTO</a>, women represent over 50% of the workforce and 27% of STEM workers, but comprise only 13% of inventors on patents. Moreover, while black inventors have made <a href="https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2018-19/march-april/colorblind-patent-system-black-inventors/">profound contributions</a> to technological advances in America, it is estimated that from 1970 to 2006, black American inventors received six patents per million people, compared to 235 patents per million for all U.S. inventors. These statistics provided part of the impetus for the conference, which was co-organized by the USPTO and co-sponsored by the law schools of Santa Clara University and Emory University, the Intellectual Property Owners Association, the US Intellectual Property Alliance, the National Academy of Inventors, the Institute for Progress, the Association of University Technology Managers, Meta, the Institute for IP and Social Justice, Finnegan, and Schwegman Lundberg & Woessner. <p></p><p>The conference focused on <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3312696">piloting</a>: temporarily introducing new practices to learn from, combined with rigorous research methods to evaluate their effectiveness. The day comprised a lively mixture of “Firestarter” presentations describing pilots already completed or underway, along with academic “pitches” — proposals for new pilots across a range of entities and at a variety of points along the innovation timeline. It also included a thought-provoking keynote address by <a href="https://economics.uchicago.edu/directory/john-list">Professor John List</a> (author of <a href="https://www.thevoltageeffect.com/">the Voltage Effect</a>) (<a href="https://santaclarauniversity.hosted.panopto.com/Panopto/Pages/Viewer.aspx?id=84f76d40-78cc-4cfa-90d1-af31017d9e44&start=4643">video</a>), exploring the importance of successful scaling of pilots to achieve measurable results, and a fireside chat with dynamic <a href="https://www.uspto.gov/about-us/executive-biographies/kathi-vidal">USPTO Director Kathi Vidal</a> whose unparalleled commitment to increasing the participation of members of underrepresented groups in the patenting process is already well underway and bearing fruit. (<a href="https://santaclarauniversity.hosted.panopto.com/Panopto/Pages/Viewer.aspx?id=84f76d40-78cc-4cfa-90d1-af31017d9e44&start=12097">video</a>)</p><p>An underlying theme of the conference was the important realization that growing the percentage of Americans of all backgrounds participating in the innovation system is not only the right thing to do, it is also critical to global economic competitiveness for the United States. For many who are aware of the dismal statistics cited above but are unsure of how to impact them, the conference provided (and through its <a href="https://law.scu.edu/high-tech-law-institute/innovator-diversity-pilots-conference-schedule/">preserved recordings</a> still provides) an empowering opportunity to identify measurable, deployable ways to pilot low risk interventions. It also facilitated the fostering of a community of practice, the bolstering of an evidence base for what works (and, importantly, what does not), all of which can inform policy and regulatory efforts to promote diversity and inclusion in innovation and invention.</p><p>Segments explored the why and how of diversity piloting, including the case for diversity in innovation and for rigorously piloting ways of advancing it. Firestarters described, inter alia, diversity nudges and ways of addressing organizational barriers to diversity in the innovation ecosystem such as the measurable success of opt-out vs. opt-in invention disclosure systems; affinity group creation and support in the USPTO; the PTAB <a href="https://www.uspto.gov/patents/ptab/leap">LEAP</a> program (granting 15 additional minutes of argument to a party that allows a junior associate to participate in oral advocacy); and a “moneyball”-like fellowship program successful in bringing back into the legal profession more than 200 women who left it to raise children. Pitches covered <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4105773">attribution practices at the Office</a>, mentorship, and adapting the diversity pledge to the legal academy. (<a href="https://santaclarauniversity.hosted.panopto.com/Panopto/Pages/Viewer.aspx?id=84f76d40-78cc-4cfa-90d1-af31017d9e44&start=14622">video</a>)</p><p>An intrinsic feature of the conference was its effectiveness in lifting up several successful initiatives already underway, as well as resources available to stakeholders seeking where or how to begin. It built on and featured important early efforts like the <a href="https://increasingdii.org/">USIPA Increasing Diversity in Innovation Pledge</a>, signed by over 50 leading companies, the USPTO <a href="https://www.uspto.gov/initiatives/equity/ci2">Council for Inclusive Innovation (CI2)</a>, <a href="https://ipo.org/index.php/diversity-in-innovation-toolkit/">IPO Diversity in IP Toolkit</a>, and the <a href="https://digitalcommons.law.scu.edu/facpubs/989/">Santa Clara Diversity in Innovation Best Practices Guide</a>. </p><p>Important law firm and corporate initiatives highlighted at the conference during <a href="https://santaclarauniversity.hosted.panopto.com/Panopto/Pages/Viewer.aspx?id=84f76d40-78cc-4cfa-90d1-af31017d9e44&start=20189">Session 5</a> include <a href="https://www.adapt.legal/">Adapt.legal’s</a> mentorship and DEI program resources, Schwegman Lundberg & Woessner’s <a href="https://www.slwip.com/slw-academy/">SLW Academy</a> providing a comprehensive set of free patent training videos, as well as Harrity & Harrity’s <a href="https://harrityllp.com/diversity/">multi-pronged approach</a> to increasing innovator and patent practitioner diversity and capacity, including the Harrity Academy and Patent Pathways programs (volunteer <a href="https://www.patentpathways.org/become-a-mentor/">here</a>). We hope at future conferences to feature even more of the work that these and other firms are doing that often is insufficiently publicized and lauded. </p><p>The conference also provided opportunities for sharing personal reflections. Colleen Chien (the mastermind of the conference and diversity piloting approach) and I together shared ways that technical fields have provided opportunities for the advancement of women and people of color in our own families and journeys, but also stereotypes and roadblocks that may stymie progress. We both found encouraging the variety of approaches presented during the day that bode well for the patent system’s ability to facilitate personal advancement for more Americans from all walks of life, while advancing our national interest in technological progress. (<a href="https://santaclarauniversity.hosted.panopto.com/Panopto/Pages/Viewer.aspx?id=84f76d40-78cc-4cfa-90d1-af31017d9e44&start=19675">video presentation</a>)</p><p>Students in a Patent Law course I taught at Harvard Law School were assigned to watch a 1.5-hour conference segment of their choosing and write a short reaction paper on their impressions. Their reactions were fascinating, featuring words like “shocking”, surprising”, “moving”, “jarring”, “heartening”, “wonderful”, “compelling”, “hopeful”, and “amazing”, and often linking what they heard in the conference pitches to their own lived experiences in research ecosystems prior to law school. </p><p>The second Innovator Diversity Pilots conference being planned for 2024 at Emory University School of Law, will build on the success and momentum of this first conference and will provide an opportunity to report learnings from pilots launched and/or continued in the interim. Please check out the conference recordings and <a href="https://law.scu.edu/innovator-diversity-pilots-conference-additional-resources-and-writings/">resources</a>, stay tuned for future blog posts, and drop us a line to let us know how we can uplift your effective practices for increasing diversity in innovation too! (diversitypilots@gmail.com)</p><p><a href="mailto:diversitypilots@gmail.com">Sign up for the DPI research updates</a></p>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-69463233099551029012023-04-25T09:25:00.003-04:002023-04-25T21:47:15.147-04:00Are NDAs unenforceable when they protect more than trade secrets?<p style="text-align: justify;">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. </p><p style="text-align: justify;">NDAs have also not traditionally been treated as <a href="https://leginfo.legislature.ca.gov/faces/codes_displaySection.xhtml?lawCode=BPC&sectionNum=16600.">contracts in restraint of trade</a>, 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 <i>per se.</i> NDAs are thus seen as comparatively "narrow restraints" which, all else being equal, should be preferred to noncompetes.</p><p style="text-align: justify;">Or at least that is the common wisdom. Although there is some support for this viewpoint in treatises and judicial <i>dicta</i>, our new article, <i><a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4384661">Beyond Trade Secrecy: Confidentiality Agreements That Act Like Noncompetes</a></i>, 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. <i>See</i> pp. 8-11 of the opinion, <a href="https://tinyurl.com/2rf5rmdf"> Doe v. Google, Inc., Case No. CGC-16-556034 (Cal. Super. Ct., Cty. of San Francisco, Jan. 13, 2022</a>)).</p><p style="text-align: justify;">The article is available on <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4384661">SSRN</a> and is forthcoming in <i>Yale Law Journal. </i>It is<i> </i>co-authored<i> </i>by <a href="https://www.uakron.edu/law/faculty/directory/profile.dot?u=chrdy">me</a> and <a href="https://law.wlu.edu/faculty/full-time-faculty/chris-seaman">Chris Seaman</a>. This blog post is cross- posted on Patently-O </p><span><a name='more'></a></span><p style="text-align: justify;">The Federal Trade Commission recently jumped into the deep end of this swimming pool by <a href="https://www.federalregister.gov/documents/2023/01/19/2023-00414/non-compete-clause-rule">proposing a rule </a>that would ban noncompete agreements in employment contracts nationwide. More surprising still, the proposed rule bans what the Commission is calling <a href="https://www.federalregister.gov/documents/2023/01/19/2023-00414/non-compete-clause-rule">"de facto" noncompetes,"</a> such as a "non-disclosure agreement between an employer and a worker that is written so broadly that it effectively precludes the worker from working in the same field after the conclusion of the worker’s employment with the employer."</p><p style="text-align: justify;">Our <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4384661">article</a> shows that there is a long history in the courts of finding NDAs are unenforceable -- and <a href="https://scholar.google.com/scholar_case?case=6337705762592340916&q=brown+v+tgs+management&hl=en&as_sdt=6,33">not just in California.</a> The jurisdictional differences abound. It would probably be unwise to write a nondisclosure agreement today without consulting up-to-date statutes, cases, and regulations from the relevant jurisdiction. That said, from reading the case law, a few main problems stand out. </p><p style="text-align: justify;">Confidentiality agreements are far more likely to be unenforceable when they: </p><p></p><blockquote><p style="text-align: justify;">(1) <a href="https://scholar.google.com/scholar_case?case=15450583618833607026&q=nalco+v.+wisconsin&hl=en&as_sdt=6,33">protect information that does not constitute trade secrets</a>, in particular by protecting public or generally known information, or information that falls within (what a court is likely to perceive as) an employee's<a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3332540"> general knowledge skill and experience</a>; </p><p style="text-align: justify;">(2) try to cover information <a href="https://scholar.google.com/scholar_case?case=3396820990850226155&q=tls+v.+rodriguez&hl=en&as_sdt=6,33">that the employee already knew when they started the job or lawfully gained from a third-party source</a>; or </p><p style="text-align: justify;">(3) are so excessively broad that they have the effect of a noncompete, even if they are styled as a "nondisclosure" or "confidentiality" provision. For example, this hypothetical language in a NDA would almost certainly be unenforceable: "Anything you learn at the company that is <a href="https://scholar.google.com/scholar_case?case=6337705762592340916&q=brown+v+tgs+management&hl=en&as_sdt=6,33">used or usable in the business</a> is confidential and can't ever be shared or used by you again without our permission, and there are no meaningful exceptions."</p></blockquote><p></p><p style="text-align: justify;">There is also an important <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4384661">empirical component to our article</a>. These agreements are themselves often kept, or even required to be kept, secret. NDA skeptics like <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2788857">Orly Lobel</a> and <a href="https://blog.ericgoldman.org/archives/2017/01/does-googles-non-disclosure-agreement-with-employees-overreach-guest-blog-post.htm">Sharon Sandeen</a> have noted that a threshold challenge in assessing NDAs is simply <i>finding</i> them. Thanks to <a href="https://law.wlu.edu/faculty/full-time-faculty/chris-seaman">Chris Seaman</a> and his "army of RA's" we have a dataset of 450 confidentiality agreements that were <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3740693">disclosed in trade secret litigation</a>. These 450 contracts give a unique snapshot of what NDAs look like in practice. Some people may find the data points alarming. For example, most of the confidentiality provisions in our dataset cover far more than trade secrets, and around 40% of the agreements in our dataset had no carve-outs at all, even for public information. For people in practice, perhaps you will <i>not</i> be surprised at the breadth of the agreements, which is itself interesting. Either way, I hope you will check out our findings on <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4384661">SSRN</a>. </p>Camilla Hrdyhttp://www.blogger.com/profile/12721860033221697174noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-19813603028275673052023-04-24T10:04:00.009-04:002023-04-26T06:48:27.407-04:00Too Much of a Good Thing: Jake Linford on Copyright & Attention Scarcity<p>In his fascinating 2020 article in <i>Cardozo Law Review,</i> entitled <i><a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3590733">Copyright and Attention Scarcity</a>,</i> 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. </p><p>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 <i>originals</i>. 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 <i>do</i> 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 <i>Star Wars</i> is authorized by Disney and when it's not.)</p><p>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 <i>Cobra Kai,</i> along with the films in the original <i>Karate Kid</i> franchise, plus the entire library of <i>Disney Plus</i>, to fully research a response.</p><span><a name='more'></a></span><p><i><b>The Derivative Works Right</b></i></p><p>Copyright law's derivative works right gives authors the <a href="https://www.law.cornell.edu/uscode/text/17/106">exclusive right to make</a> "<a href="https://www.law.cornell.edu/uscode/text/17/103">derivative" works that "employ[] preexisting material"</a>, such as sequels, translations, and adaptations. For example, the author of the bestselling book <i>The Hunger Games, </i>Susan Collins, can prevent others from releasing sequels or film versions of the book. What is more, <a href="https://www.law.cornell.edu/uscode/text/17/103">infringing derivative works are not themselves copyrightable</a>. So no matter how creative an infringing sequel to the <i>The Hunger Games </i>is, it cannot be protected without Collins' permission. And in fact Collins could sweep in and <a href="https://h2o.law.harvard.edu/collages/31817">use that infringing sequel without recrimination</a>. This is different from in patent law, where <a href="https://www.law.cornell.edu/uscode/text/35/101">improvement patents</a>, covering improved versions of patented inventions, are <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1274199">legal</a>.</p><p>The conventional justification for a right to exclude for derivative works is that it bolsters the economic incentive function of copyright. As Jane Ginsburg <a href="https://scholarship.law.columbia.edu/faculty_scholarship/59/">explains</a>, vesting first authors control over derivative works can both encourage creation of those derivative works and encourage investment in the original work itself. Some have also argued a derivative works right protects the <a href="https://scholarlycommons.law.case.edu/cgi/viewcontent.cgi?referer=&httpsredir=1&article=1206&context=caselrev">moral rights</a> of authors. </p><p>Some scholars, like Rebecca Tushnet, have pushed back on this premise. For instance, in her <a href="https://digitalcommons.lmu.edu/cgi/viewcontent.cgi?article=1347&context=elr">1997 article on fan fiction</a>, which is a common form of derivative work, Tushnet argued that, historically, "less-than-absolute copyright" has <i>not</i> necessarily hurt copyright owners financially and has produced enormous benefits for fans. Tushnet gave the example of Paramount, whose decision to permit unauthorized fan fiction adaptations within the <i>Star Trek</i> universe did not negatively impact the market for the original show or authorized spin-offs (<i>Next Generation, Deep Space Nine, Voyager, Enterprise, New Worlds</i>...etc.). Indeed, she observes, "[a]n official <i>Star Trek</i> novel is sold every thirteen seconds[.]" (Tushnet, 672). </p><p><b><i>Linford's "Attention Scarcity" Justification for the Derivative Works Right</i></b></p><p>Enter Linford. He argues that, in fact, opening the flood gates on unauthorized derivatives, even for seemingly innocuous purposes like fan fiction, would be bad for <i>consumers</i> of content, as well as for content creators, because it would overload their already-taxed attention.</p><p>"[I]f attention were an unlimited resource," Linford writes, "then more information would always be a net good." But when attention is scarce, more is not always better. If new entrants were free to use original works derivatively, they would be tempted to just keep selling re-mixes of what consumers<span style="font-family: inherit;"> already know, using copyrighted works as "[a] tool to harvest attention." Consumers would be swamped with derivative offerings from diverse sources, their brains overloaded with too much derivative content. </span></p><p><span style="font-family: inherit;">Copyright law, Linford argues, mitigates this problem in two ways. First, by eliminating infringing (non-fair use) derivatives, copyright creates legal barriers for new entrants, so that aspiring creators of unauthorized sequels and the like can't make them without risking getting sued. Second, copyright provides a de facto "quality" signal to consumers, directing them to one or a few officially authorized options. </span>Linford thus defends giving copyright owners rights to control derivative works. (Though he stops short of advocating for an increase in the strength of the derivative work right, he seeks to maintain the status quo).</p><p>Linford's thesis has many precursors. For example, <a href="https://www.nyulawreview.org/wp-content/uploads/2018/08/NYULawReview-79-1-Yoo_0.pdf">Christopher Yoo</a> and <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2465590">Joseph Fishman</a> have justified the derivative works right on similar grounds, highlighting the benefits of <i>exclusion for exclusion's sake</i>. In particular, Linford's arguments echo those of Michael Abramowicz, whose' <a href="https://www.minnesotalawreview.org/wp-content/uploads/2011/11/Abramowicz_Final.pdf">2005 article</a> applied racing theory (used <a href="http://www.law.nyu.edu/sites/default/files/upload_documents/Kitch.pdf">to justify broad patent rights</a>) in order to justify copyright's derivative works right. Abramowicz argued that content producers often have strong incentives to create close substitutes for popular existing works. A strong derivative works right helps reduce opportunities for "demand diversion" and reduces wasteful races to create derivatives following a successful original work. (Abramowicz, 360). </p><p>This is similar to Linford's thesis, except whereas Abramowicz emphasized the problem of wasteful racing among derivatives, Linford looks to the literature on attention scarcity and the effects of content overload on consumers. </p><p>(To state the obvious, Linford is also not alone in discussing the theme of information abundance and implications thereof. One such work — not coincidentally — shares this blog post’s title, courtesy of Mike Madison, Kathy Strandberg, Madelyn Sanfillipo, Brett Frischmann, <a href="https://www.frontiersin.org/articles/10.3389/frma.2022.959505/full">https://www.frontiersin.org/articles/10.3389/frma.2022.959505/full</a>.)</p><p><b><i>Reasons for Skepticism</i></b></p><p>I am initially well disposed towards Linford's thesis, because I personally feel overloaded by the amount of creative content at my disposal. There are, however, a few reasons I am skeptical.</p><p><b><i>1. Does A Derivative Works Right Really Mean <u>Less</u> Content?</i></b></p><div>Linford assumes that if original creators can control content release this will reduce the amount of derivative content marketed to consumers. He gives the example of the Walt Disney Company, which controls and "schedule[s]" the availability of its "stable of characters and collection of movies[.]" He suggests that without a derivative works right, the flood gates would open on Disney content, and derivative-makers would storm in with an unmanageable amount of content that overwhelms consumers.</div><div><br /></div><div>There are several reasons to doubt this is true.</div><p>First, one conventionally-stated purpose of the derivative works right is to encourage owners to produce <i>more </i>derivative content, not less. One way this can happen is through controlled licensing. As William Landes and Richard Posner <a href="https://www.jstor.org/stable/3085624?seq=1">discussed</a>, a derivative works right permits efficient licensing of numerous derivatives to third parties. So the derivative works right might mean more derivative content, not less. To give an obvious example, there have been, like, fifteen<i> </i>sequels or prequels to <i>Star Wars </i>since the original film came out in 1977. I shudder to say this, but my attention feels sapped by authorized <i>Star Wars </i>content<i>.</i></p><p>Second, even with the derivative works right, there can still be enormous quantities of legal "close substitutes" cluttering the marketplace. For example, after the <i>The Hunger Games</i> books and film came out, legal close substitutes like <i><a href="https://en.wikipedia.org/wiki/The_Divergent_Series">Divergent</a> </i>and <i><a href="https://en.wikipedia.org/wiki/The_Maze_Runner_(film)">The Maze Runner</a></i> followed. Those are similar but legal, copying at worst ideas and scènes à faire. But they definitely free rode on the market interest generated by <i>The Hunger Games,</i> and arguably produce just as much clutter as infringing derivatives.</p><p><i><b>2. Isn't a Higher Originality Standard the More Obvious Solution?</b></i></p><p>Relatedly, why would the optimal solution to over production of derivative content be a strong derivative works right rather than a higher originality standard for derivatives? Non-infringing derivative works <a href="https://www.law.cornell.edu/uscode/text/17/103">can be independently copyrighted</a> if they are sufficiently original. But what if the rule were clearer that a derivative work can only be copyrighted if it introduces original elements on a heightened standard, more than a "<a href="https://scholar.google.com/scholar_case?case=1195336269698056315&q=feist&hl=en&as_sdt=6,36">modicum of creativity</a>," as is usually required? Judge Posner suggested something of this nature, positing in <i><a href="https://scholar.google.com/scholar_case?case=14709428378250469895&q=richard+posner+copyright+derivative+work+garland&hl=en&as_sdt=6,33">Gracen v. Bradford Exchange</a></i> that "a derivative work must be substantially different from the underlying work to be copyrightable." Raising the bar on derivative originality might streamline what gets copyrighted, <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3620118">just as "obviousness" is thought to streamline what gets patented</a>. </p><p>In response, Linford suggested to me that even without the prospect of derivative copyrights, newcomers would still jump in to fill the void, free-riding off the demand generated by originals, so we would likely see more redundant derivatives even without the opportunity to copyright. That may be so. But I still think it's an open question whether the solution to "too many derivative works" is giving copyright in derivative works only to authors, versus giving out less copyright for derivative content period. </p><p><b><i>3. What If Derivative Content Is Easier To Absorb Than Original Content?</i></b></p><p>Even assuming Linford is right that giving authors control over derivative works leads to less derivative content, I am not sure this helps over-taxed consumers in the age of attention scarcity. Linford implies that opening the floodgates on derivative works would overwhelm consumers by giving them, so to speak, too much of a good thing. "Congestion of attention resources," he writes, "will increase as the number of firms demanding attention increases..." Consumers will become overloaded with all the derivatives at their disposal. </p><p>But this ignores the possibility that derivative content is less taxing to read or watch than original content. My intuition is that it takes people <i>less</i> time and energy to absorb derivative content because it is familiar. The premise and characters are already known. The details differ, but the general outlines are the same. Personally, when I have less time and attention to give, my go-to is often derivative content. I don't have the energy to get into something new. So I read the latest sequel. I watch Season 7. I check out a re-make of an old film. I find that it takes less of my attention to absorb these. It's as if they fit more readily into the congested hallways of my short-term memory. </p><p>So this leads me to ask whether people with taxed attention spans might actually benefit from a higher proportion of derivative content, whether perhaps in the age of attention scarcity they prefer sequels and re-makes, simply because they take up less mental space. I don't know the answer. But if wholly original content is more taxing on attention spans than derivative content, this casts doubt on the thesis that reducing derivative content alleviates attention overload.</p><p><i><b>4. Isn't the bigger problem trademark infringement?</b></i></p><p>One of the big problems Linford's thesis addresses is source confusion: falsely marketing a derivative work as connected to the same source as the original. But, as Linford concedes, this is conventionally seen as a trademark law issue, not a copyright law issue. Thanks to trademark law, in a world without derivative copyright, anyone could produce a sequel to <i>Karate Kid</i> (1984). But trademark law would prohibit them from suggesting they are the makers of, or affiliated with, the original Karate Kid. </p><p>Linford suggests that trademark law might be a worse solution to the source-confusion problem in this context than using copyright law to prohibit unauthorized derivative content because trademarks don't expire after a term-of-years, whereas copyright does. This point falls a bit flat to me. The copyright term is seventy-plus years for solo-authored works and over a hundred years long for works-made-for-hire. More importantly, trademark protection would be a lot weaker in this context than copyright. Without the copyright derivative works right, a newcomer could still make the derivative work, using the original characters, plot elements, imagery, and so on. They would just have to be very clear about the source. (It is also worth noting that trademark protection can be<span style="font-family: times;"> </span><span style="font-family: times;"><a href="https://scholar.google.com/scholar_case?case=1156769317965951408&q=amos+n+andy+silverman&hl=en&as_sdt=6,36">abandoned</a></span> when the original work is deliberately taken off the market, so that could end trademark protection altogether for original works that are deliberately taken off the market. For example, <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3715133">if a streaming service takes a show down for good</a>, then trademark protection might end, even if copyright protection continues for the usual term, subject to fair use.)</p><p>The upshot is that in most cases, the trademark-only solution would open up far more room to make derivatives. On the other hand, Linford would presumably point out that this is precisely the problem: Too many re-makes. </p><p style="text-align: center;">*** </p><p>To conclude, I loved this article and learned an enormous amount reading it and researching this response. Many thanks to Linford for motivating me to delve into the fascinating world of the copyright derivative works rights. I look forward to the next one.</p><div><br /></div>Camilla Hrdyhttp://www.blogger.com/profile/12721860033221697174noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-44246366964649768092023-02-13T12:37:00.005-05:002023-02-15T09:20:06.107-05:00Lemley & McKenna: Trademark Spaces<p style="text-align: justify;">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.</p><p style="text-align: justify;">In their fascinating new article, <i><a href="https://law.stanford.edu/publications/trademark-spaces-and-trademark-laws-hidden-step-zero/">Trademark Spaces and Trademark Law’s Secret Step Zero</a></i>, 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. </p><p style="text-align: justify;">The article is now <a href="https://www.stanfordlawreview.org/print/article/trademark-spaces-and-trademark-laws-secret-step-zero/">published in the<i> Stanford Law Review</i></a> (and posted here on <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4020571">SSRN</a>).</p><div style="text-align: justify;"><span><a name='more'></a></span><b><br /></b></div><div style="text-align: justify;"><b>Prior scholarship on "trademark failure to function"</b></div><p style="text-align: justify;"><i>Trademark Spaces</i> builds directly on Alexandra Roberts' recent article on whether a mark functions as a trademark. (<a href="https://law2.wm.edu/faculty/bios/fulltime/laheym.php">Laura Heymann</a> previously blogged on Roberts' work on <a href="https://scholarship.law.wm.edu/cgi/viewcontent.cgi?article=1478&context=popular_media">JOTWELL</a>). In <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2916731"><i>Trademark Failure to Function</i></a>, Roberts compellingly showed that trademark law contains the legal requirement that a mark be used as, and function as, a trademark, and that this requirement is grounded in the statute. <i>See</i> <a href="https://www.law.cornell.edu/uscode/text/15/1127">15 U.S.C.§ 1127</a>. Use-as-a-mark generally means the putative mark must be perceived by consumers <i>as a source-identifier</i>, instead of as something else, like merely ornamental or informational content. </p><p style="text-align: justify;">This use-as-a-trademark requirement is <i>separate</i> from the requirement of inherent or acquired "<a href="https://scholar.google.com/scholar_case?case=9011105700430131407&q=abercrombie+v+hunter&hl=en&as_sdt=6,36">distinctiveness</a>." Distinctiveness asks: How unique or unusual is the word, logo, or device in its own right? Does it stand out enough conceptually to consumers? Use-as-a-mark asks: Does it look like a source-identifier or not? In practice, this means the putative trademark "must appear where consumers expect a trademark to appear, and it must be sufficiently set off from the surrounding text and images to attract notice." (Roberts, 105). Otherwise, it does not function as a trademark to consumers and is invalid, no matter how conceptually distinctive it might be on the <a href="https://scholar.google.com/scholar_case?case=9011105700430131407&q=Abercrombie+hunter&hl=en&as_sdt=6,36"><i>Abercrombie</i> spectrum</a>. </p><p style="text-align: justify;">Use-as-a-mark has been like (in Roberts' words) the "stepchild" of trademark law, receiving very little attention compared to distinctiveness. Many trademark case books don't cover it. Students are unlikely to learn about it in IP survey. However, Roberts showed that in practice the trademark office regularly rejects trademark applications as merely "<a href="https://www.uspto.gov/trademarks/laws/ornamental-refusal-and-how-overcome-refusal">ornamental</a>" if the specimen of use submitted by the applicant does not show the mark is being used in a way that consumers will recognize as a trademark. (Roberts, 5). The office states in the Trademark Manual of Examining Procedure (TMEP) § 1202.03, that </p><p style="text-align: justify;"></p><blockquote>"[s]ubject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark, as required by §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127."</blockquote><p></p><p style="text-align: justify;">The office provides some examples of proper use (e.g. a tag on clothing) and improper use, such as words or phrases "used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates ... that purchasers will perceive as conveying a message rather than indicating the source of the goods." <a href="https://tmep.uspto.gov/RDMS/TMEP/print?version=current&href=TMEP-1200d1e1688.html">TMEP. § 1202.03(f)(i). </a></p><p style="text-align: justify;">Roberts observed that, despite how often examiners issue failure-to-function-style these refusals, the office has not given examiners concrete guidance on what constitutes ornamental use, as compared to other refusals like distinctiveness. (122-123). Instead, a lot of the analysis is apparently performed without much transparency and based on decision-makers' gut instincts.</p><p style="text-align: justify;"><b>The broader relevance of trademark spaces </b></p><p style="text-align: justify;">Building on Roberts' failure-to-function scholarship, Lemley and McKenna's article argues that whether a trademark is legally protectable depends in part on where it is located in physical space, and on whether it is located in what the authors call a "trademark space." </p><p style="text-align: justify;">Whether a mark is in a trademark space can obviously help illuminate whether a mark fails to function, in the way Roberts described. Physical location is not the only factor the examiners assess in deciding whether to reject as merely "<a href="https://www.uspto.gov/trademarks/laws/ornamental-refusal-and-how-overcome-refusal">ornamental</a>," but it is a big one. So trademark spaces is highly relevant to the question of whether a putative trademark fails to function as a trademark.</p><div style="text-align: left;"><span style="text-align: justify;">However, in contrast to Roberts' article, which focused on word marks, Lemley and McKenna's article focuses on how trademark spaces inform trademark protection for </span><span style="text-align: justify;">non-verbal marks, such as logos<i> </i>and<i> </i></span><span style="text-align: justify;">trade dress.</span><span style="text-align: justify;"> Their article does deal with the question of whether a non-verbal mark functions as a trademark. However, one of the main take-homes I got from their article is that, especially for non-verbal marks, neither examiners nor courts have properly separated out the questions of use-as-a-mark and distinctiveness. The issues are often jumbled together, and a lot of the real analytical work is happening (as the authors say) in "secret." </span></div><div style="text-align: left;"><span style="text-align: justify;"><br /></span></div><div style="text-align: left;"><span style="text-align: justify;"><b>Ignoring <i>Wal-Mart</i></b></span></div><div style="text-align: left;"><span style="text-align: justify;"><br /></span></div><div style="text-align: left;"><span style="text-align: justify;">One of the main doctrinal issues where Lemley and McKenna see trademark spaces playing a role is in how courts apply, or don't apply, the Supreme Court's analytical framework for trade dress.</span></div><div style="text-align: left;"><span style="text-align: justify;"><br /></span></div><div style="text-align: left;"><span style="text-align: justify;">Un</span><span style="text-align: justify;">der the Supreme Court's holding in </span><i style="text-align: justify;"><a href="https://scholar.google.com/scholar_case?case=11551321958641509496&q=walmart+samara&hl=en&as_sdt=6,33">Wal-Mart</a>,</i><span style="text-align: justify;"> </span><span style="text-align: justify;">product packaging trade dress, as well as other non-verbal marks like logos, can be inherently distinctive. I</span><span style="text-align: justify;">n contrast, </span><span style="text-align: justify;">product design trade dress, such as the distinctive "look" of children's clothing, is harder to protect </span><span style="text-align: justify;">because, like a <a href="https://scholar.google.com/scholar_case?case=17905304466595211702&q=qualitex+v.+color&hl=en&as_sdt=6,36">single color</a>, product design trade dress always requires secondary meaning. </span><span style="text-align: justify;"> </span></div><div style="text-align: left;"><span style="text-align: justify;"><br /></span></div><div style="text-align: left;"><span style="text-align: justify;">Identifying product designs (and </span><a href="https://scholar.google.com/scholar_case?case=5868799770808339132&q=trademark+forney++color&hl=en&as_sdt=6,36" style="text-align: justify;">single colors for that matter</a><span style="text-align: justify;">) has proven very difficult. The closest thing to a definition t</span><span style="text-align: justify;">hat the Court in </span><i style="text-align: justify;"><a href="https://scholar.google.com/scholar_case?case=11551321958641509496&q=walmart+samara&hl=en&as_sdt=6,33">Wal-Mart</a> </i><span style="text-align: justify;">gave is that "</span><span style="text-align: justify;">almost invariably, even the most unusual of product designs—such as a cocktail shaker shaped like a penguin—is intended not to identify the source, but to render the product itself more useful or more appealing." Even Justice Scalia conceded </span><span style="text-align: justify;">in </span><i style="text-align: justify;"><a href="https://scholar.google.com/scholar_case?case=11551321958641509496&q=walmart+samara&hl=en&as_sdt=6,33">Wal-Mart</a> </i><span style="text-align: justify;"> that this is not a very helpful standard. (24-25). </span></div><div style="text-align: justify;"><br /></div><div style="text-align: left;"><span style="text-align: justify;">As a descriptive matter, Lemley and McKenna argue that examiners and courts are not really applying </span><i style="text-align: justify;"><a href="https://scholar.google.com/scholar_case?case=11551321958641509496&q=walmart+samara&hl=en&as_sdt=6,33">Wal-Mart</a> </i>at all, or at least they aren't just doing that. (31, 42). Instead, they are (implicitly) asking whether a non-verbal feature <i>looks enough like a trademark</i> to be protected. In effect, they are asking whether it functions as a trademark in the way Roberts discussed in her work. Moreover, in asking whether the feature functions as a mark, examiners and courts are looking at <i>where </i>the feature is located. If the feature is in a trademark space (e.g. left breast of shirt), it is more likely to be classified as a logo or product packaging. If it is <i>not</i> located in a discrete trademark space, it is more likely to be treated as product design trade dress. </div><div style="text-align: left;"><div><br /></div></div><div style="text-align: left;"><span style="text-align: justify;">One of the clearest examples Lemley and McKenna give of this phenomenon is the fact that <span>de</span><span>cision makers have treated the</span> three-stripes feature on the side of Adidas' shoes as a <i>logo</i> that's capable of inherent distinctiveness because the three-stripes are in classic trademark space, </span><span style="text-align: justify;">"without ever acknowledging" the possibility that Adidas’s three-stripes might be product design. (5, note 7). In other words, they look at the three-stripes and they say "that's a trademark, because it's in a trademark space," and then they give it more favorable treatment, classifying it as a logo. This in turn allows Adidas to rely on inherent distinctiveness rather than having to show secondary meaning, as would be the case if this were product design trade dress.</span></div><div style="text-align: left;"><span style="text-align: justify;"><br /></span></div><div style="text-align: left;"><span style="text-align: justify;">Obviously, the Adidas three-stripes mark would survive anyway, because it has secondary meaning now. But the point is that this sort-of secret "step zero" analysis is occurring, and is affecting other cases going forward. </span><span style="text-align: justify;"> For example, other places on shoes, like the toe, aren't seen as a normal place for a trademark to be, and so features in those places are assessed as product design trade dress and denied protection without a showing of secondary meaning. </span><i style="text-align: justify;">Compare</i><span style="text-align: justify;"> </span><a href="https://scholar.google.com/scholar_case?case=17328019018758259145&q=LVL+XIII+Brands,+Inc.+v.+Louis+Vuitton+Malletier+S.A&hl=en&as_sdt=6,33" style="text-align: justify;">LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A</a><span style="text-align: justify;">. (2d Cir. 2017) (holding "rectangular metal plate affixed to the toe of LVL's sneakers" is a product design feature only protectable with secondary meaning).</span></div><div style="text-align: left;"><span style="text-align: justify;"><br /></span></div><div style="text-align: left;"><span style="text-align: justify;"><span style="text-align: left;">Courts and examiners are also likely assessing trademark spaces to some degree when they evaluate the inherent distinctiveness of</span><span> logos and product packaging trade dress. For these types of marks, courts typically use the </span><a href="https://scholar.google.com/scholar_case?case=12818521892267408526&q=seabrook+foods&hl=en&as_sdt=6,36" style="font-style: italic;">Seabrook Foods </a><span>test </span><span>in lieu of the <a href="https://scholar.google.com/scholar_case?case=9011105700430131407&q=Abercrombie+hunter&hl=en&as_sdt=6,36"><i>Abercrombie</i> spectrum</a>. <a href="https://scholar.google.com/scholar_case?case=12818521892267408526&q=seabrook+foods&hl=en&as_sdt=6,36" style="font-style: italic;">Seabrook Foods</a> doesn't compare the meaning of a term to the product or service at issue; instead, it looks at factors like how unusual the logo, imagery, or packaging is in the industry, and whether it "is capable of creating a commercial impression distinct from the accompanying words." </span><span> (12-13, 68-69).</span> One of the easiest ways to create a distinct commercial impression is to place a feature in a discrete physical space.</span></div><div style="text-align: left;"><span style="text-align: justify;"> </span></div><div style="text-align: left;"><b style="text-align: justify;">The case for considering trademark spaces more explicitly</b></div><div><span style="text-align: justify;"><p style="text-align: justify;"><span>The authors' normative claim is that this</span> "secret step zero" should be made explicit and done with more precision. They recommend the following framework. If a mark is located in a trademark space, it should benefit from a rebuttable presumption that it functions as a trademark. Distinctiveness, either inherent or through secondary meaning, still must be met separately. But generally speaking, this would mean that marks placed in trademark spaces will be easier to protect than marks that are not placed in trademark spaces. (7-8, 65-67).</p><p style="text-align: justify;">There are several potential payoffs from adopting this approach. One benefit is simply helping trademark examiners and courts conduct difficult inquires for which they currently lack guidance -- like deciding whether a feature is perceived by consumers as a trademark, or deciding whether to classify a feature as product design trade dress. Explicitly considering whether the feature is located in a trademark space could in theory give decision-makers a helpful tool for classifying non-verbal features and for "determining whether a claimed design functions as a mark[.]" (7-8, 64-74).</p><p style="text-align: justify;">Another payoff is that limiting trademarks to certain spaces can help constrain what can serve as a trademark in the first place and, to quote the authors, help reign in "the problem of trademark creep." (72-73). If trademark spaces becomes an accepted part of establishing a protectable trademark, then some spaces can be trademark spaces; but other spaces can remain free from trademark protection. "Recognizing certain trademark spaces may also open the door to acknowledging that ... just as there are trademark spaces on products and packaging, there are also non-trademark spaces." (73). </p><p style="text-align: justify;"><b>Some tricky issues</b></p><p style="text-align: justify;">I found the descriptive aspect of this article extremely insightful. I was convinced by the claim that decision makers often take physical space into account when determining what can be protected as a trademark. I also love the normative proposal to use trademark spaces more explicitly to keep trademarks in their proper place. I think this could make trademarks a more valuable informational tool for consumers, while also helping control inappropriate uses of trademarks, and especially trade dress, protection. </p><p style="text-align: justify;">I will point out below a few difficult issues that decision makers will likely face in applying this framework, and how the authors seek to address them. I'll also consider possible interplay between trademark spaces and the functionality bar.</p><p style="text-align: justify;"><b>1. How do we know what counts as a trademark space?</b></p></span></div><div style="text-align: justify;">The first and most obvious difficulty in applying the trademark spaces framework is how to decide what counts as a trademark space. Putting aside the obvious examples like the left breast of a t-shirt this is not an easy task. Lemley and McKenna don't give a mathematical definition or exhaustive list. </div><div style="text-align: justify;"><br /></div><div style="text-align: justify;">In fact, one of their main points is that what count as a trademark spaces for consumers today is not inevitable or dictated only by efficiency. Trademark spaces evolve over time depending on where companies choose to place their trademarks on products, and how successful those products are. For example, the success of companies' like Nike and Adidas in selling shoes with a Swoosh and three-stripes, respectively, on the side or tongue of their shoes turned this into a trademark space. And now consumers perceive as such. (32-35).</div><div style="text-align: center;"><br /></div><div style="text-align: justify;">While recognizing the innate difficulty in predicting or predetermining what happens in the marketplace, the authors suggest that what counts as a trademark space should not be based on the gut instinct of a single examiner or judge, and definitely should not be solely up to companies to make those decisions through well-resourced branding campaigns that can allow companies to effectively "buy up" new and unprecedented trademark spaces. (66).</div><div style="text-align: justify;"><br /></div><div style="text-align: justify;">Going forward, one very practical recommendation the authors make is that the trademark office give more guidance "about what constitutes a trademark space on various forms of consumer goods." (71). To some degree, the office has already done so in the course of addressing so-called ornamental use in <a href="https://tmep.uspto.gov/RDMS/TMEP/print?version=current&href=TMEP-1200d1e1688.html">TMEP. § 1202.03</a>, quoted above. On its website, and in a mildly entertaining <a href="https://www.youtube.com/watch?v=eTG3Pj6awKk&feature=youtu.be">broadcast</a>, the office helpfully gives some specific examples of<a href="https://www.uspto.gov/trademarks/laws/ornamental-refusal-and-how-overcome-refusal"> non-ornamental uses</a>, which I think we can call trademark spaces:</div><ul><li style="text-align: justify;">"[d]iscrete wording or design on the pocket or breast portion of a shirt", </li><li style="text-align: justify;">a "tag on the inside of a hat or garment",</li><li style="text-align: justify;"> a "[l]ogo on a tag above the back pocket of a pair of jeans", or</li><li style="text-align: justify;"> "[a] small logo stamped on the back of a dinner plate or bottom of a coffee mug." </li></ul><div style="text-align: justify;">The office even provides a few examples of improper uses of non-verbal marks and trade dress. <i>See, e.g</i>., <a href="https://tmep.uspto.gov/RDMS/TMEP/print?version=current&href=TMEP-1200d1e1688.html">TMEP § 1202.03(f)-(g)</a>, showing uses that failed inherent distinctiveness under the <i>Seabrook Foods, </i>or<i> </i>appeared to be "ornamental," "decorative," or otherwise lacking in "trademark significance." </div><div style="text-align: justify;"><br /></div><div style="text-align: justify;">But the office could do a lot more work to identify locations that examiners and more importantly consumers see (or do not see) as trademark spaces. The office could keep up to date on where marks are being used and on what examiners and courts have said about the trademark-appropriateness of certain physical spaces. Surveys could be performed or collected from cases and<a href="https://ederosia.byu.edu/an-empirical-and-consumer-psychology-analysis-of-trademark-distinctiveness/"> academic work. </a>All sorts of evidence could be considered. (71-72). Again, the payoff from doing this could be two-fold: help examiners and courts make difficult decisions more transparently; and constrain the places that are subject to trademark protection, keeping trademarks in their proper place.</div><div style="text-align: justify;"><span style="text-align: left;"> </span></div><b><div style="text-align: justify;"><b>2. Is the feature <i>separable</i> from, or part of, a product's design?</b></div></b><p></p><p style="text-align: justify;">A second extremely tricky issue in applying trademark spaces is that it can be hard to decide whether a feature is in fact in a trademark space, as opposed to part of a product's overall design. It's easy to say a logo on the left breast of a shirt is in a trademark space and call it a logo. But what if a feature is sort-of in a trademark space, and also sort-of integrated into the design as a whole? </p><p style="text-align: justify;">For example, on many sneaker models, <a href="https://www.adidas.com/us/superstar-shoes/FV3284.html?af_channel=Search&af_click_lookback=30d&af_reengagement_window=30d&c=PLA&cm_mmc=AdieSEM_Feeds-_-GoogleProductAds-_-NA-_-FV3284&cm_mmca1=US&cm_mmca2=NA&dfw_tracker=24819-FV3284-0008&gclid=CjwKCAiAlp2fBhBPEiwA2Q10Dz2-RjJdxnjWe3MVMsg_GB_zgU3PfR5bqwUQAib2gv81A5ePiGoD1hoCvS0QAvD_BwE&gclsrc=aw.ds&is_retargeting=true&kpid=FV3284&pid=googleadwords_temp&sourceid=543457011FV3284">Adidas' three-stripes mark is very big</a>. It's not confined to the usual trademark space on the side of the shoe. Is this a logo that is being used in a trademark space and that clearly functions as a trademark? Or is it in fact product design trade dress and also not clearly functioning as a trademark?</p><p style="text-align: justify;">To solve this issue, Lemley and McKenna develop a concept of "separability." They suggest that it is possible to separate out a feature located in a trademark space from the rest of the product's design, but that this is not always the case. For example in <i><a href="https://scholar.google.com/scholar_case?case=2246840286238609051&q=in+re+slokevage&hl=en&as_sdt=6,36">In Re Slokevage</a>,</i><i> </i>the putative trademark was a cut-away flap configuration on the back pocket of jeans, which is a place where companies like Levis have long placed their trademarks. But the examiners and the Federal Circuit held this was product design under <i>Wal-Mart. </i>The authors' separability concept could explain this case by saying that the cut-away flap feature was product design because it was not sufficiently separable from the design as a whole.</p><p style="text-align: justify;">It strikes me that this separability concept is going to be hard to apply. Copyright law's useful article doctrine has a statutory concept of separability, <a href="https://www.law.cornell.edu/uscode/text/17/101">17 U.S.C. § 101</a> (protecting pictorial, graphic, or sculptural features "that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of [a useful] article."), and that has been<a href="https://scholar.google.com/scholar_case?case=3822888794493391837&q=star+athletica+llc&hl=en&as_sdt=6,36"> notoriously hard to apply in practice</a>. The authors notably do not draw on copyright's separability concept, presumably because it's such a mess. Instead, they find support in the <a href="https://scholar.google.com/scholar_case?case=12818521892267408526&q=seabrook+foods&hl=en&as_sdt=6,36" style="font-style: italic;">Seabrook Foods </a>test, which many courts use for assessing the inherent distinctiveness of non-verbal mark such as logos and product packaging in lieu of <i>Abercrombie</i>. This test expressly considers, among other factors, whether the feature is "capable of creating a commercial impression distinct from the accompanying words." This analysis can be re-jiggered to take into account trademark spaces. We can ask, is the feature "capable of creating a commercial impression" apart from the rest of the product's design, or is it in fact part of the design? </p><p style="text-align: justify;">To try to understand how this works, I asked the authors how it would apply to the famous Burberry “check mark” pattern, which appears on scarves, sunglasses, and clothing. Their answer, as I understand it, was that sometimes this can get trademark space treatment, but only if the pattern is used in a trademark space and in a way that creates a separate commercial impression from the product as a whole. As you can see below <a href="https://www.courtlistener.com/docket/6592080/burberry-limited-v-target-corporation/">(from a complaint Burberry brought against Target)</a> the pattern often takes up the entire article like a scarf. There's nothing in a trademark space that is separable from the scarf as a whole. So this is product design, even if the check mark touches on some trademark spaces. (One could even make the argument that it's akin to a single color).</p><p style="text-align: justify;"><img class="c0115" height="406" src="https://chorus.stimg.co/21480990/ows_153456021010509.jpg?w=525&h=600&format=auto%2Ccompress&cs=tinysrgb&auto=compress&crop=faces&dpr=2" style="text-align: left;" width="559" /> </p><p style="text-align: justify;">In contrast, Burberry sometimes uses that pattern in discrete physical spaces, like the<a href="https://www.saksfifthavenue.com/product/burberry-sandridge-belted-logo-trench-coat-0400014554129.html"> lapel of a jacket.</a> Assuming the lapel of a jacket is a trademark space, then this use of the pattern would be, I think, conceptually separable from the design as a whole and count as use in a trademark space. Thus, there would be a rebuttable presumption that it functions as a trademark. (Distinctiveness under <i>Seabrook</i> would still have to be shown or a showing of secondary meaning.) </p><div><b style="text-align: justify;">3. Relevance for functionality?</b></div><p style="text-align: justify;">One issue I'm still working through is how, or whether, trademark spaces can help courts and examiners apply the functionality bar. This is important because functionality is the main backstop for features that achieve secondary meaning and can otherwise be protected. Functionality cabins protection for distinctive features that become beloved by consumers, and yet also serve non-trademark functions, such as making something useful or making something pretty. </p><p style="text-align: justify;">For example, the Burberry check mark pattern, shown above, has a lot of secondary meaning among fashionistas. Functionality (of the aesthetic variety) is an important limitation on how far Burberry can protect its pattern. </p><p style="text-align: justify;"><a href="https://www.virginialawreview.org/articles/functionality-screens/">Lemley</a> and <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1965716">McKenna</a> have each written at length about functionality in prior articles, so while they allude to a potential interaction between trademark spaces and functionality, they don’t address it in depth. (69, 77). It seems to me there is interplay between trademark spaces and functionality, because trademark spaces should, by definition, be non-functional. Trademark spaces should be sufficiently out of the way and not interfere with the product's non-trademark utility, aesthetically or mechanically-speaking.</p><p style="text-align: justify;"><i>Utilitarian functionality</i></p><p style="text-align: justify;">One could argue that trademark spaces are necessarily defined in contrast to what has a mechanical function. In <i><a href="https://scholar.google.com/scholar_case?case=12704680276957369308&q=traffix+devices+inc&hl=en&as_sdt=6,36">TrafFix</a></i>, Supreme Court held that a product feature is "functional and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." The Court suggested, though, the possibility of a carve-out for "arbitrary, incidental, or ornamental aspects of features of a product," "such as arbitrary curves in the legs or an ornamental pattern painted on the springs." (The Court said these features don't get a presumption of functionality, even if they are claimed in a utility patent). </p><p style="text-align: justify;">This suggests a division between functional features, such as a dual spring design that holds a road sign up in the wind, and non-functional "arbitrary, incidental, or ornamental features," which are or can become trademark spaces. In other words, utility can dictate what can be a trademark space. Like a peacock's tail, trademark spaces have to be non-essential to how the product functions and cannot affect cost or quality. They need to stay out of the way. One example, suggested by a few courts, are the specific features making up the <a href="https://scholar.google.com/scholar_case?case=9610632184202459475&q=hummer+general+motors+toys+attack+corps++&hl=en&as_sdt=6,36">"look" of a Hummer</a> vehicle that are not shared by other military vehicles. </p><p style="text-align: justify;"><i>Aesthetic functionality</i></p><p style="text-align: justify;">The aesthetic functionality bar is trickier. This holds that features cannot be protected if doing so would put competitors at a "<a href="https://scholar.google.com/scholar_case?case=1422674449865697977&q=christian+louboutin+v+yves+saint+laurent+america&hl=en&as_sdt=6,36">significant non-reputation related disadvantage</a>." This doctrine allows courts to narrow the scope of trademark protection, giving the owner only a sliver of protection for source-identifying features, while allowing others to use even-potentially-confusingly-similar features for <i>non-source identifying reasons</i> -- namely, because they are pretty. </p><p style="text-align: justify;">One possible interpretation of aesthetic functionality could be that it constrains trademark protection to certain physical trademark spaces. For example, a famous aesthetic functionality case involves a <a href="https://scholar.google.com/scholar_case?case=5908618221163465935&q=pagliero+wallace&hl=en&as_sdt=6,36">floral pattern on dish ware</a>. Trademark spaces would say, don't try to make the floral pattern on the front of the plate your trademark. That isn't a trademark space. Put a logo on the back of the plate instead. If you must, use the floral pattern in a discrete physical space. Likewise, for the Burberry check mark example, trademark spaces would say, you can't claim the check mark pattern as your trademark for all possible uses. It's only protected to the extent it is used in specific spaces, like on the lapel of a jacket or on <a href="https://us.burberry.com/exaggerated-check-woolleather-gloves-p80502181">the top of the fingers of gloves</a>. Likewise, if you want the <a href="https://scholar.google.com/scholar_case?case=1422674449865697977&q=christian+louboutin+v+yves+saint+laurent+america&hl=en&as_sdt=6,36">red outsole of a high-heel to be your trademark</a>, do so in way that carves out a <a href="https://www.bergdorfgoodman.com/p/christian-louboutin-kate-100mm-red-sole-pumps-prod174380056?utm_source=google_shopping&ecid=BGCS_GP_CV_HA_PR_NONE&gclid=CjwKCAiA3KefBhByEiwAi2LDHEEOCTreDBXgeKvJ1Z6dJknhDxO9R2xXngia82hTxJEJwq6KuEyDwRoCoxEQAvD_BwE&gclsrc=aw.ds">discrete physical space</a>. To quote the <a href="https://scholar.google.com/scholar_case?case=1422674449865697977&q=christian+louboutin+v+yves+saint+laurent+america&hl=en&as_sdt=6,36">Second Circuit,</a> "limit the trademark to uses in which the red outsole contrasts with the remainder of the shoe ..." I don't claim to know whether that is what courts are doing in aesthetic functionality cases. But it does seem like one approach to aesthetic functionality could be to constrain trademark protection to certain spaces.</p>Camilla Hrdyhttp://www.blogger.com/profile/12721860033221697174noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-8894948460640172652022-10-21T11:30:00.010-04:002022-10-21T12:17:49.271-04:00Gersen & Hemphill: What's in a Bottle? <p style="background-color: white; text-align: justify;">What's in a bottle? If the bottle in question is shown below, the answer is protected trade dress. The Coca-Cola Company presently maintains several active registrations for many of its bottle shapes.<i> See, e.g.,</i> Trademark Reg. No.'s <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231778000&usg=AOvVaw1DQOcPqvDBNGX35lqpOyvf" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">696147</a>, <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231778000&usg=AOvVaw1DQOcPqvDBNGX35lqpOyvf" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">4242307</a>, <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231778000&usg=AOvVaw1DQOcPqvDBNGX35lqpOyvf" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">4200433</a><wbr></wbr>.</p><p style="background-color: white; text-align: justify;"><img alt="Trademark image" class="CToWUd" data-bit="iit" height="305" id="m_-6758928607104512990gmail-markImage" src="https://blogger.googleusercontent.com/img/proxy/AVvXsEjj6a3PblgIwvtYh24b7GL7VkQhyphenhyphenTkkKbEbJUgP5e5sFkWYmhADB4an8NVP2RP6eC6UaFC06e5ln6v3Z7RGo-eCjIvjFqtUVwF3bDztZEBm3H2zgFeMypJzb66x2W7sCJpLq8vZlPA0OVhBtwjSyX_JJsalUTfwWg=s0-d-e1-ft" style="height: 260px; margin-left: 0px; margin-top: 0px; width: 227px;" width="266" /><img alt="Trademark image" class="CToWUd" data-bit="iit" id="m_-6758928607104512990gmail-markImage" src="https://blogger.googleusercontent.com/img/proxy/AVvXsEhVNsWSbIsX-ncch0hHpZGnJSKk9pCbkmSiNigHtlHSeIc6zt-61pVvs9GhYrLHcKi1pW6h4yyJ5Gf_1B0wQT4Y4ojQhMvlAwCILXSwnV2_ZCARK7DhSgK-vQeZNrF4ujxtIdOFnTec1Vpapa94WQGQIMWG22gBEQ=s0-d-e1-ft" style="height: 260px; margin-left: 0px; margin-top: 0px; overflow: hidden; width: 260px;" /><img alt="Trademark image" class="CToWUd" data-bit="iit" id="m_-6758928607104512990gmail-markImage" src="https://blogger.googleusercontent.com/img/proxy/AVvXsEi2VtolVAW6F7CAIh8fTH1yJmylU3cSPtFkMMciiOlfJJ2_j9qp1IJCAYV4iEeVoryZ0ANn4ulR-2zvMa8yiR8eMRrB66-0DuDr6LueOvaqhOZCwSfMOTpTP29xcE-dQYLSjjri16drkggujyMYcDEBJqpdIIcaiw=s0-d-e1-ft" style="height: 260px; margin-left: 0px; margin-top: 0px; overflow: hidden; width: 260px;" /></p><p style="background-color: white; text-align: justify;"><br /></p><p style="background-color: white; text-align: justify;">These registrations serve as "<a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">prima facie evidence</a>" of, among other things, The Coca-Cola Company's "exclusive right to use the registered [trade dress] in commerce on or in connection with the goods or services specified in the registration[,]" subject to defenses such as abandonment, descriptive fair use, and functionality. Other sellers that use a confusingly similar bottle shape without authorization from The Coca-Cola Company could be sued under the Lanham Act, <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">§ 32</a> or <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">§ 43</a>, even if they don't use the well-known Coca-Cola names or color schemes. That is what trade dress protection can accomplish.</p><p style="background-color: white; text-align: justify;">In their fascinating new essay<a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">, "The Coca-Cola Bottle: A Fragile Vessel for Building a Brand,"</a> which is forthcoming in <i>Legal Applications of Marketing Theory </i>(<span style="background-color: transparent; text-align: left;">Gersen & Steckel, eds),<i> </i></span>Jacob Gersen and Scott Hemphill tell the history of how The Coca-Cola Company (hereafter "Coke") secured lock-tight trade dress protection in the distinctive shapes of its bottles. The authors also previously authored a book chapter on the Coke bottle for <a href="https://www.amazon.com/History-Intellectual-Property-50-Objects/dp/110842001X/ref=asc_df_110842001X/?tag=hyprod-20&linkCode=df0&hvadid=343989295398&hvpos=&hvnetw=g&hvrand=17700779032568130300&hvpone=&hvptwo=&hvqmt=&hvdev=c&hvdvcmdl=&hvlocint=&hvlocphy=9004338&hvtargid=pla-773636120599&psc=1&tag=&ref=&adgrpid=69543896832&hvpone=&hvptwo=&hvadid=343989295398&hvpos=&hvnetw=g&hvrand=17700779032568130300&hvqmt=&hvdev=c&hvdvcmdl=&hvlocint=&hvlocphy=9004338&hvtargid=pla-773636120599" style="background-color: transparent;"><i>A History of Intellectual Property in 50 Objects, </i></a>edited by Claudy Op den Kamp and Dan Hunter. </p><p style="background-color: white; text-align: justify;">Digging into historical documents <span style="color: #333333; font-size: 16px; text-indent: 16px;">— </span>including settlement agreements resulting from litigation that Coke brought against other sellers <span style="color: #333333; font-size: 16px; text-indent: 16px;">—</span> the authors argue that the company's trajectory towards trade dress protection for the famous Coca-Cola bottle was not as smooth as we might think. In the authors' words, it was "fragile and contingent." (2). They reveal many reasons things might have come out differently for Coke. </p><p style="background-color: white; text-align: justify;">I won't summarize the whole essay here, because it's short and very fun to read. But I want to draw out what I see as one of the authors' most important insights. They show that Coke secured common law trade dress protection by initially using <i>design patent law. </i>They argue that, under contemporary legal principles, courts might have rejected this strategy and not permitted Coke to use unfair competition law to protect its bottle shapes following the expiration of Coke's design patents. This is, after all, what the Supreme Court did <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">in 1938</a> when it did not let Nabisco stop other sellers from using the "pillow shape" of Nabisco's shredded wheat cereal following expiration of Nabisco's patents. Things did not come out that way. Coke's strategy was a winner. But the authors suggest things could have gone very differently. </p><span><a name='more'></a></span><p style="background-color: white; text-align: justify;">Back in the 1880s, as the authors tell it, Coke deliberately designed a bottle shape with the hope that it would be distinctive and legally protectable against imitators. The idea was to design a bottle that was “so shaped that, even if broken, a person could tell at a glance what it was.” (4, quoting a contemporary source). Coke's goal, the authors suggest, was to obtain exclusivity by any means necessary. It was not just to prevent other sellers from using similar names (e.g. Koke). For that, Coke could have relied on traditional word mark protection for "Coca-Cola" <span style="color: #333333; font-size: 16px; text-indent: 16px;">—</span>though the authors describe how even this proved challenging given what was (or rather what was not) in the drink. (15-16).</p><p style="background-color: white; text-align: justify;">Coke wanted more than words. It wanted to protect the bottle shape itself and it wanted to do so for as long as possible. According to the authors, this was a very deliberate strategy. Coke initially ran a $500 contest to settle on a unique bottle shape. Coke then secured three design patents for different versions of the Coke bottle shape and used those to sue other sellers like Whistle, which was using a somewhat similar bottle shape but selling "brightly colored soda" (8) instead of the dark colored soda Coke is known for. (For images of the Whistle's own design patent and comparison to Coca-Cola's, see the author's essay.). </p><p style="background-color: white; text-align: justify;">The Coke design patents, the authors write, were "granted in 1915, 1923, and 1937" and "collectively spanned nearly 36 years—more than double the 14-year duration of protection for a single patent." (7). After the design patents expired, Coke was left with trade dress protection under unfair competition law, and eventually federal trade dress protection under Lanham Act of 1946. It still has this trade dress protection today, and will continue to have it subject to <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">abandonment</a>. </p><p style="background-color: white; text-align: justify;">Under modern doctrine, trade dress is available for a bottle shape like Coke's. However, there are two major caveats, either of which could have defeated Coke early on: distinctiveness and functionality.</p><p style="background-color: white; text-align: justify;"><i><b>Product Design, Secondary Meaning, and Design Patents</b></i></p><p style="background-color: white; text-align: justify;">First, if the feature is classified as product design, which Coke's bottle probably is, there's a higher threshold for distinctiveness. If a feature is deemed to be product design <span style="color: #333333; font-size: 16px; text-indent: 16px;">—</span>part of what makes the product "useful or appealing" to consumers<span style="color: #333333; font-size: 16px; text-indent: 16px;">—</span> then the trade dress owner needs to prove secondary meaning<span style="color: #333333; font-size: 16px; text-indent: 16px;">—</span>i.e. that consumers associate the feature, in reality, with a single source. <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">Justice Scalia </a>specifically gave the glass Coca-Cola bottle as an example of a "hard case at the margin" where courts and trademark examiners might have trouble drawing the line between packaging and design, because the shape of the bottle is part of the product for at least some consumers. </p><p style="background-color: white;"></p><blockquote style="background-color: white;"><p style="text-align: justify;">There will indeed be some hard cases at the margin: a classic glass Coca-Cola bottle, for instance, may constitute packaging for those consumers who drink the Coke and then discard the bottle, but may constitute the product itself for those consumers who are bottle collectors, or part of the product itself for those consumers who buy Coke in the classic glass bottle, rather than a can, because they think it more stylish to drink from the former. </p></blockquote><p style="background-color: white; text-align: justify;">In the same breath <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">Justice Scalia</a> suggested that, to the extent this was a "close call," then the court should err on the side of classifying this as product design and require a showing of secondary meaning. Obviously today the Coke shape would survive and remain protectable trade dress because it does have secondary meaning among consumers of soft-drinks. The Coke bottle is a shape that consumers recognize and associate with a single (and very famous) source. </p><p style="background-color: white; text-align: justify;"><span style="text-align: left; text-indent: 16px;">But how did Coke get this secondary meaning? At the time, the authors show, there were other sellers, like Whistle, using similar bottle shapes. Coke had to distinguish itself from those sellers in consumers' minds. The easiest way to do this is to be the only one, and, to extent you are not the only one, place legal barriers in others' way. This is what Coke did. Specifically, the authors assert that Coke strategically used "bootstrapping" </span><span style="color: #333333; font-size: 16px; text-align: left; text-indent: 16px;">— </span><span style="text-align: left; text-indent: 16px;">which they define as using one type of claim "to compensate for a weakness or other deficiency in another"—to combine the protections of design patents and trade dress. </span><span style="text-align: left; text-indent: 16px;">The design patents Coke had secured gave it several decades' worth of protected use during which Coke could sue others using similar bottle designs for infringement. Coke wasn't always successful, but it did sue, and perhaps scared away, others. Then, after the design patents' expiration, Coca Cola was left with trade dress protected through enormous amounts of secondary meaning that it had built up during its periods of design patent protection. </span></p><p style="background-color: white; text-align: justify;">In other words, Coca Cola used "de facto" secondary meaning (exclusivity thanks to patent rights) to gain "de jure" (legal) secondary meaning in the end based on real-world consumer impressions.</p><p style="background-color: white; text-align: justify;">The authors do not explicitly condone or condemn this type of "bootstrapping"<span style="text-align: left; text-indent: 16px;">—</span>though, as discussed below, they note the views of courts, especially early on, that this could disrupt the patent bargain. The basic concern is that, if a seller gets its 14 (or now 15) years under a design patent, why should it also get trade dress protection too? The whole point of the patent system is ostensibly to calibrate incentives to reward creators while preserving the rights of the public after patents expire. Tacking on trade dress to the expired patent seems to go against all of that. </p><p style="background-color: white; text-align: justify;">To play Devil's Advocate, one could argue there's not necessarily anything wrong with a seller garnering secondary meaning for a feature (e.g. the Coke bottle shape) by using a design patent, and then using that secondary meaning to protect, <i>specifically</i>, those marketing features that consumers come to see as identifying the seller and distinguishing them from others. It's at least theoretically possible to separate out the policy functions of the design patent and the trade dress, and to posit that design patents help fill a gap in trade dress law that protects new companies that haven't yet developed secondary meaning. </p><p style="background-color: white; text-align: justify;">It's easy to say now that Coke "doesn't need trade dress in the bottle because it has a famous name and a dominant position in the soft drink market." But what about smaller businesses or other sellers who aren't as dominant? The principle of "secondary meaning in the making" is controversial in trademark law. Sellers aren't typically supposed to gain protection for descriptive marks until they develop secondary meaning. But it's not unheard-of for trademark law to recognize the interests of newcomers to a market and give them breathing space to develop their reputations. Examples include: restaurant decor/non-product-design trade dress like in <i style="background-color: transparent;"><a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">Two Pesos</a></i>, where the Supreme Court held this type of trade dress can be protected as "inherently distinctive" prior to developing secondary meaning; similar cases like <i style="background-color: transparent;"><a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">Fuddruckers</a></i> where the Ninth Circuit suggested Fuddruckers might be able protect its trade dress in an area where it did not yet have proof of secondary meaning if there was intentional copying; and, more generally, the "<a href="https://scholar.google.com/scholar_case?case=17173964070221079101&q=natural+zone+of+expansion+trademark&hl=en&as_sdt=6,33">natural zone of expansion</a>" doctrine which allows unregistered users to protect marks in places where they don't yet operate but are likely to expand. </p><p style="background-color: white; text-align: justify;"><i><b>Functionality Bar and Design Patents</b></i></p><p style="background-color: white; text-align: justify;">The story for functionality is still more interesting. Even trade dress that is legally distinctive is vulnerable to the functionality bar. In the wake of <i><a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">Two Pesos</a></i>, which permitted trade dress protection for the appearance of a Mexican restaurant that lacked secondary meaning at the time, Congress amended the Lanham Act to specifically provide that in a case involving unregistered trade dress, the burden is on the person asserting protection to prove non-functionality. <i>See</i> <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">15 U.S.C. § 1125(a)(3)</a>. And even for registered and incontestable trade dress, <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">functionality remains as a defense</a>.</p><p style="background-color: white; text-align: justify;">In 2001, the Supreme Court held in <i><a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">TrafFix</a></i> that a feature is functional in a utilitarian sense if it's "essential" to the use or purpose of the article, or if it affects cost or quality. Importantly, the Supreme Court indicated that an (active or expired) <i>utility</i> patent is "strong evidence" of utilitarian functionality. But the Court did not indicate that a <i>design</i> patent, versus a utility patent, would serve as strong evidence of functionality. So the bottle design is in a good place to survive a functionality challenge, irrespective of the fact that it was covered by design patents long ago. </p><p style="background-color: white; text-align: justify;">However, the authors suggest things could have come out very differently. They characterize early case law as viewing patents as a "bargain between the patentee and the public" and enforcing a somewhat-strict rule that "after expiration, the patented invention or design is dedicated to the public." (17). The authors point out that in the famous "Shredded Wheat" case, <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">the Supreme Court had held</a> that Nabisco could not get trade dress for the previously-patented "pillow shape" of Nabisco Shredded Wheat, and that the Court had observed that Nabisco previously had<i> a design patent</i> on the "the pillow-shaped form," not just a utility patent on the machine for making them. Justice Brandeis wrote, </p><p style="background-color: white;"></p><blockquote style="background-color: white; text-align: justify;">The plaintiff has not the exclusive right to sell shredded wheat in the form of a pillow-shaped biscuit — the form in which the article became known to the public. That is the form in which shredded wheat was made under the basic patent. The patented machines used were designed to produce only the pillow-shaped biscuits.<i><b> And a design patent was taken out to cover the pillow-shaped form. Hence, upon expiration of the patents the form, as well as the name, was dedicated to the public.</b></i></blockquote><p style="background-color: white;"></p><p style="background-color: white; text-align: justify;"><a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">Kellogg Co. v. National Biscuit Co., 305 US 111, 119-120 (1938).</a> (The authors observe, too, that a court in a similar a prior case, written by Judge Hand on the Second Circuit, had also mentioned that the shredded wheat pillow shape was the subject of a now-expired design patent. The citation is Shredded Wheat Co. v. Humphrey Cornell Co., 250 F. 960 (2d. Cir. 1918)).</p><p style="background-color: white; text-align: justify;">These cases might have suggested that Coke should be "unable to assert an unfair competition claim that blocked others’ use of the bottle once the design patents had expired[,]" because "[t]he logic of the bargain theory[,]" under which the patented subject matter is dedicated to the public once the patent expires, "applied with equal force to utility and design patents[.]" (19). </p><p style="background-color: white; text-align: justify;">But Coca-Cola did not fall to this challenge and instead was able to rest on its design patents; generate breathing room to develop secondary meaning; and then capture indefinite trade dress protection thereafter. The reason, the authors suggest, is that the law took a different trajectory, favoring the functionality concern alone. <i><a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">TrafFix</a></i> for instance looks to utility patents as an indicator of <i>functionality</i>, not necessarily as an indicator of a patent owner impermissibly extending protection after expiration. They argue this distinction between design and utility patents makes sense, if functionality is the issue. (19) ("A concern with functionality provides a basis for distinguishing design patents from utility patents. Utility patents protect functional features, whereas design patents protect ornamental features."). But it would not make sense under the older ideas about a bargain between patentee and public or even based on a loose "no-bootstrapping" rule. </p><p style="background-color: white; text-align: justify;">One comment on this point. I don't necessarily disagree with the authors' assessment of modern functionality. They state that "[f]<span style="text-align: left;">unctionality, and a version of functionality confined to utility patents, is the principal doctrine that mediates the interaction between patent and trade dress. Today, an expired design patent is generally held to pose no barrier to continued trade dress protection or injunctive relief." (20). </span>This is true in the sense that an expired design patent doesn't generate "strong evidence" of <i>utilitarian</i> functionality. As mentioned above, in <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc; font-style: italic;" target="_blank">TrafFix</a><i>, </i>the Court specifically held that "[a] <span style="text-align: left;">utility patent is strong evidence that the features therein claimed are functional..." but</span> did not mention design patents. Of course, this doesn't mean the previously design-patented feature might not still be found functional, as, for instance, the <a href="https://scholar.google.com/scholar_case?case=778298028189962878&q=apple++samsung+design+patent+trade+dress&hl=en&as_sdt=6,33">Ninth Circuit found</a> certain features of Apple's iPhone were. The presence of a patent alone isn't dispositive in either direction. (Notably, the Supreme Court in <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="background-color: transparent; color: #1155cc; font-style: italic;" target="_blank">TrafFix</a><span style="text-align: left;"> left open the possibility of protection, even for formerly-utility-patented features, where</span> the claimed feature "is merely an ornamental, incidental, or arbitrary aspect of the device."). </p><p style="background-color: white; text-align: justify;">Another complication to this thesis is so-called aesthetic functionality. This is a doctrine that has split off from utilitarian functionality since those early cases were decided. Aesthetic functionality (which should really have a different name) limits protection for features that, even if they don't strictly "do" anything, are too pleasing to consumers to place in the hands of a single seller. Examples: the shape of peanut butter cups, heart-shaped boxes, shoulder pads...maybe even the particular shape of a soda bottle. <a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc;" target="_blank">Today</a>, courts will hold a feature is aesthetically functional if providing exclusivity would place other sellers of the same product at a "significant non-reputation-related disadvantage." </p><p style="background-color: white; text-align: justify;">The authors, perhaps wisely, decided to steer clear of aesthetic functionality in their essay. But the doctrine alters the calculus for trade dress protection at a practical level. Even if it were true that utilitarian functionality disregarded features previously protected by design patents, the aesthetic functionality bar might still apply to those features and at least limit the scope of protection to preserve market competition. Here, the Coke bottle design would still be subject to aesthetic functionality. True, the standard is laxer because, if alternative designs are available, this can be considered and weigh in favor of granting protection. The Coke bottle designs still would survive with a narrow sliver of protection, so long as there's a range of adequate alternative designs leftover. The key word though is narrow. The scope of protection would be limited to the bottle shape for which Coke has secondary meaning and in which granting protection would not "significantly" limit competition in the market for colas. </p><p style="background-color: white; text-align: justify;">To be sure, the fact that aesthetic functionality exists as an additional barrier to over-broad trade dress protection does not contravene the authors' point about the functionality approach winning out over a bargain theory approach. If bargain theory were the basis for these doctrines, then there might be no trade dress protection <i>at all</i> for trade dress features like the Coke bottle shape that were initially protected under design or utility patents. Still, aesthetic functionality's existence does complicate the authors' assertion that "[f]unctionality, and a version of functionality confined to utility patents, is the principal doctrine that mediates the interaction between patent and trade dress. (20)." While it's true that "[t]oday, an expired design patent is generally held to pose no barrier to continued trade dress protection or injunctive relief[,]" so-called aesthetic functionality is still there as a back-stop that at least limits the scope of trade dress protection even for features that survive utilitarian functionality. </p><p style="background-color: white; text-align: justify;">***</p><p><span style="background-color: white; text-align: justify;">Long story short, read the essay. It's really good! </span> </p><br class="Apple-interchange-newline" /><span style="background-color: white; text-align: justify;">For some other recent papers looking at the design patent/trade dress interface, see, e.g., </span><a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc; text-align: justify;" target="_blank">McKenna & Silbey, Investigating Design</a><span style="background-color: white; text-align: justify;">, </span><a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc; text-align: justify;" target="_blank">Fromer & McKenna, Claiming Design</a><span style="background-color: white; text-align: justify;">, </span><a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc; text-align: justify;" target="_blank">McKenna, Fixing Functionality</a><span style="background-color: white; text-align: justify;">. For argument that design patents fill a gap in trade dress protection and serve as an "alternative rule of evidence" in trade dress protection, see </span><a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc; text-align: justify;" target="_blank">Crouch, A Trademark Justification For Design Patents</a><span style="background-color: white; text-align: justify;">. On design patents, generally, see, e.g., </span><a data-saferedirecturl="https://www.google.com/url?q=https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265%23&source=gmail&ust=1665961231779000&usg=AOvVaw3b-QGEI4i-vbJ9gnI6FT9Q" href="https://www.blogger.com/blog/post/edit/2977297931731346524/889494846064017265#" style="color: #1155cc; text-align: justify;" target="_blank">Burstein, various papers</a><span style="background-color: white; text-align: justify;">.</span>Camilla Hrdyhttp://www.blogger.com/profile/12721860033221697174noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-80026404953459178152022-09-06T19:12:00.003-04:002022-09-06T21:44:06.631-04:00Morten Follow-Up: What Do Federal Agencies' Enabling Statutes Say About Their Power to Disclose Trade Secrets?<p style="text-align: justify;">In my <a href="https://writtendescription.blogspot.com/2022/08/christopher-morten-do-federal-agencies.html">prior post</a> I interviewed <i style="text-align: justify;"> </i><a href="https://www.law.columbia.edu/faculty/christopher-morten" style="text-align: justify;">Christopher Morten</a><span style="text-align: justify;"> </span>at Columbia Law School about his article <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4041556" style="text-align: justify;">"Publicizing Corporate Secrets</a>," which is forthcoming in <i>University of Pennsylvania Law Review. </i> Morten <span style="text-align: justify;">argues that federal agencies have much more power to publicly disclose trade secrets and confidential information collected from private companies than is commonly believed. </span><span style="text-align: justify;">He argues that sometimes agencies do have the authority to "break" corporate secrets, and sometimes they do not. His core insight is that ultimately </span><span style="text-align: justify;">it's the agencies' <i>enabling statutes</i> passed by Congress that dictate their power to disclose trade secrets and confidential information. </span>I will now post links and our discussion of the full text of some of these enabling statutes, so that readers can see the statutes and make their own interpretations.</p><span><a name='more'></a></span><div style="text-align: justify;"><b>CM</b>: Here are four examples of enabling statutes that <i>do</i> allow agency disclosure of trade secrets. </div><div style="text-align: justify;"><ul><li>The National Transportation Safety Board (NTSB). Title 49 expressly permits NTSB to disclose accident data, even if that data includes trade secrets. <a href="https://www.law.cornell.edu/uscode/text/49/1114">49 U.S.C. § 1114(b)(3).</a> </li><li>The Environmental Protection Agency (EPA). The Federal Insecticide, Fungicide, and Rodenticide Act (FIFRA) permits EPA to disclose pesticide formulas, even if those formulas include trade secrets. 7 U.S.C. §§ 136h, 136j. This was, of course, the Act at issue in <i><a href="https://scholar.google.com/scholar_case?case=4542458969053697124&q=Monsanto+v.+Ruckelshaus&hl=en&as_sdt=6,36&as_vis=1">Monsanto v. Ruckelshaus</a></i>; in that case, SCOTUS concluded that FIFRA gives EPA legal authority to take trade secret information from pesticide manufacturers and share it with their competitors.</li><li>The National Institutes of Health (NIH). The Food and Drug Administration Amendments Act implicitly permits the NIH to disclose clinical trial data, even if that data includes trade secrets. <a href="https://www.law.cornell.edu/uscode/text/42/282">42 U.S.C § 282(j)</a> (statute); <a href="https://www.govinfo.gov/app/details/FR-2016-09-21/2016-22129">81 Fed. Reg. 64982,</a> <a href="https://www.govinfo.gov/app/details/FR-2012-10-24/2012-26168">64994</a> (NIH’s interpretation of the same). </li><li>The Food & Drug Administration (FDA). The Food, Drug, & Cosmetic Act implicitly permits FDA to disclose clinical trial data, even if that data includes trade secrets. 21 U.S.C. §§ 371(a), 393(b) (statute); 66 Fed. Reg. 4688, 4694 (FDA’s interpretation of the same). The <a href="https://www.californialawreview.org/print/the-big-data-regulator-rebooted/">article</a> Amy Kapczynski and I published last year goes into detail on this data and the relevant statutes.</li></ul></div><p style="text-align: justify;">Here are three examples of enabling statutes that <i>do not</i> allow disclosure. </p><p style="text-align: justify;"></p><ul><li>The Food Drug and Cosmetic Act <i>prohibits</i> FDA from disclosing pharmaceutical manufacturing processes.<a href="https://www.law.cornell.edu/uscode/text/21/331"> 21 U.S.C. § 331(j)</a>. </li><li>The Federal Trade Commission Act (FTCA) prohibits the Federal Trade Commission (FTC) from disclosing any trade secrets. <a href="https://www.law.cornell.edu/uscode/text/15/46">15 U.S.C. § 46(f).</a> </li><li>The Patent Act prohibits USPTO from disclosing applications under certain situations (e.g., less than 18 months from effective filing date).<a href="https://www.law.cornell.edu/uscode/text/35/122"> 35 U.S.C. § 122.</a></li></ul><p></p><p style="text-align: justify;"><b>CAH</b>: OK. So, looking at these provisions, the ones <i>prohibiting</i> disclosures, like the FDCA with respect to manufacturing processes, are a bit clearer to me than the ones you say allow them. The FDCA,<a href="https://www.law.cornell.edu/uscode/text/21/331"> 21 U.S.C. § 331(j)</a>, is pretty clear that it prohibits public disclosure of trade secret methods or processes related to making pharmaceutical drugs except in limited circumstances like to the courts or Congress, presumably under a protective order in a closed setting. It prohibits<b> </b></p><p><b></b></p><blockquote style="text-align: justify;">"[t]he using by any person to his own advantage, or revealing, other than to the Secretary or officers or employees of the Department, or to the courts when relevant in any judicial proceeding under this chapter, any information acquired under authority of...this title concerning any method or process which as a trade secret is entitled to protection...This paragraph does not authorize the withholding of information from either House of Congress or from, to the extent of matter within its jurisdiction, any committee or subcommittee of such committee or any joint committee of Congress or any subcommittee of such joint committee." </blockquote><p></p><p style="text-align: justify;">The FTCA is similarly prohibitive. <a href="https://www.law.cornell.edu/uscode/text/15/46">15 U.S.C. § 46(f)</a> gives the FTC certain powers to disclose but really appears to strictly withhold the power to publicly disclose trade secrets.</p><p></p><blockquote style="text-align: justify;"> "The Commission shall also have power ... (f) Publication of information; reports To make public from time to time such portions of the information obtained by it hereunder as are in the public interest; and to make annual and special reports to the Congress and to submit therewith recommendations for additional legislation; and to provide for the publication of its reports and decisions in such form and manner as may be best adapted for public information and use: Provided, That the Commission shall not have any authority to make public any trade secret or any commercial or financial information which is obtained from any person and which is privileged or confidential, except that the Commission may disclose such information (1) to officers and employees of appropriate Federal law enforcement agencies or to any officer or employee of any State law enforcement agency upon the prior certification of an officer of any such Federal or State law enforcement agency that such information will be maintained in confidence and will be used only for official law enforcement purposes, and (2) to any officer or employee of any foreign law enforcement agency under the same circumstances that making material available to foreign law enforcement agencies is permitted under section 57b–2(b) of this title."</blockquote><p></p><p style="text-align: justify;">The other provisions that you say allow disclosure aren't quite as clear to me. They are vaguer, which is perhaps your point... They leave open a plausible argument of agency authority to publicly disclose trade secrets in some circumstances. That said, to me it seems like preserving confidentiality is still the spirit. </p><p style="text-align: justify;">For example, here is the full text of what I think is the relevant provision for the NTSB you mentioned, for disclosure of accident reports, <a href="https://www.law.cornell.edu/uscode/text/49/1114">49 U.S.C. § 1114(b)(3)</a>. I added underlines of some aspects of Section 1114 that strike me as especially relevant and ripe for debate.</p><p></p><blockquote><p style="text-align: justify;">"(a) General.— (1) Except as provided in subsections (b), (c), (d), and (f) of this section,<u><b> a copy of a record, information, or investigation submitted or received by the National Transportation Safety Board, or a member or employee of the Board, shall be made available to the public on identifiable request and at reasonable cost. This subsection does not require the release of information described by <a href="https://www.law.cornell.edu/uscode/text/5/552">section 552(b) of title 5 </a>or protected from disclosure by another law of the United States. </b></u></p><p style="text-align: justify;">(2) The Board shall deposit in the Treasury amounts received under paragraph (1) to be credited to the appropriation of the Board as offsetting collections. </p></blockquote><blockquote><p style="text-align: justify;">(b) Trade Secrets.— (1) <u><b>The Board may disclose information related to a trade secret referred to in section 1905 of title 18 only— </b></u></p></blockquote><blockquote><p style="text-align: justify;">(A) to another department, agency, or instrumentality of the United States Government when requested for official use; </p></blockquote><blockquote><p style="text-align: justify;">(B) to a committee of Congress having jurisdiction over the subject matter to which the information is related, when requested by that committee; </p></blockquote><blockquote><p style="text-align: justify;">(C) in a judicial proceeding under a court order that preserves the confidentiality of the information without impairing the proceeding; and </p></blockquote><blockquote><p style="text-align: justify;">(D) <u><b>to the public to protect health and safety after giving notice to any interested person to whom the information is related and an opportunity for that person to comment in writing, or orally in closed session, on the proposed disclosure, if the delay resulting from notice and opportunity for comment would not be detrimental to health and safety.</b></u> </p></blockquote><blockquote><p style="text-align: justify;">(2) Information disclosed under paragraph (1) of this subsection <u><b>may be disclosed only in a way designed to preserve its confidentiality. </b></u></p></blockquote><blockquote><p style="text-align: justify;">(3) Protection of Voluntary Submission of Information.— Notwithstanding any other provision of law, <u><b>neither the Board, nor any agency receiving information from the Board, shall disclose voluntarily provided safety-related information if that information is not related to the exercise of the Board’s accident or incident investigation authority under this chapter and if the Board finds that the disclosure of the information would inhibit the voluntary provision of that type of information</b></u>. ..."</p></blockquote><p style="text-align: justify;"><a href="https://www.law.cornell.edu/uscode/text/49/1114">49 U.S.C. § 1114(b)(3).</a> </p><p style="text-align: justify;">I agree this provision suggests there are <i>some</i> situations where NTSB can disclose accident data, even if that data includes trade secrets. But it also suggests that preserving confidentiality is key, and that interested persons need to get notice and a chance to object when public disclosure is contemplated. It also seems to give the agency discretion <i>not</i> to disclose if it thinks that the FOIA exemptions, or some other protection, apply. And then there are also some pretty open-ended prohibitions in here too, at the end in subsection (3). </p><p style="text-align: justify;">So it's very complicated, not clear-cut. At the end of the day, doesn't this provision seem to provide that the trade secrets and confidential information "<span style="text-align: justify;">may be disclosed <i>only in a way designed to preserve its confidentiality</i>"?</span> How does that work, if the disclosure is made "to the public" ?</p><p style="text-align: justify;"><b>CM</b>: On NTSB and 49 U.S.C. § 1114, I am indeed of the view that this provision permits the NTSB to “break” trade secrets by disclosing them to the public, so long as it can show that disclosure of the secret is necessary “to protect health and safety.” <a href="https://thefederalregister.org/82-FR/29670">Here’s what NTSB itself has said about the effect of the statute</a>:</p><p style="text-align: justify;"></p><blockquote>The NTSB retains the authorization to disclose “information related to a trade secret,” as defined by 18 U.S.C. 1905, without the consent of the owner when necessary to “to protect public health and safety” under 49 U.S.C. 1114(b)(1)(D). We interpret this to mean disclosure is necessary to support a key finding, a safety recommendation, or the NTSB's statement of probable cause of an accident or incident. When we release information related to a trade secret or confidential commercial information without consent, we do so in a manner designed to preserve confidentiality. We interpret this to require that the agency minimize the scope and extent of information released. </blockquote><blockquote>The NTSB retains the authorization to disclose “information related to a trade secret,” as defined by <a href="https://www.law.cornell.edu/uscode/text/18/1905">18 U.S.C. 1905</a>, without the consent of the owner when necessary to “to protect public health and safety” under <a href="https://www.law.cornell.edu/uscode/text/49/1114">49 U.S.C. 1114(b)(1)(D).</a> We interpret this to mean disclosure is necessary to support a key finding, a safety recommendation, or the NTSB's statement of probable cause of an accident or incident. When we release information related to a trade secret or confidential commercial information without consent, we do so in a manner designed to preserve confidentiality. We interpret this to require that the agency minimize the scope and extent of information released. </blockquote><p></p><p style="text-align: justify;"><b>CAH</b>: And of course I love the patent application example. The U.S. Patent & Trademark Office (USPTO) is of course a federal agency, and its enabling statute tightly controls its authority to disclose patent applications and information related to those applications, which will likely often include trade secrets. The gist of it is the agency can't disclose these at all ... until a certain window passes, and certain conditions are met, and then it <i>must</i> do so. <a href="https://www.law.cornell.edu/uscode/text/35/122">35 U.S.C. § 122</a> says, in relevant part, </p><blockquote><p style="text-align: justify;">"(a) Confidentiality.— Except as provided in subsection (b), applications for patents <u><b>shall be kept in confidence </b></u>by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.</p></blockquote><blockquote><p style="text-align: justify;">(b) Publication.— (1) In general.—<span style="text-align: left;"> </span></p></blockquote><blockquote><p style="text-align: justify;">(A) Subject to paragraph (2), each application for a patent <b><u>shall be published</u></b>, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.<span style="text-align: left;"> </span></p></blockquote><blockquote><p style="text-align: justify;">(B) No information concerning published patent applications shall be made available to the public except as the Director determines.</p></blockquote><blockquote><p style="text-align: justify;">(C) Notwithstanding any other provision of law, a determination by the Director to release or not to release information concerning a published patent application shall be final and nonreviewable.<span style="text-align: left;"> </span></p></blockquote><blockquote><p style="text-align: justify;">(2) Exceptions.—<span style="text-align: left;"> </span></p></blockquote><blockquote><p style="text-align: justify;">(A) An application shall not be published if that application is—</p></blockquote><blockquote><p style="text-align: justify;">(i) no longer pending;<span style="text-align: left;"> </span></p></blockquote><blockquote><p style="text-align: justify;">(ii) subject to a <a href="https://www.law.cornell.edu/uscode/text/35/181">secrecy order under section 181</a>;</p></blockquote><blockquote><p style="text-align: justify;">(iii) a provisional application filed under section 111(b); or<span style="text-align: left;"> </span></p></blockquote><blockquote><p style="text-align: justify;">(iv) an application for a design patent filed under chapter 16.<span style="text-align: left;"> </span></p></blockquote><blockquote><p style="text-align: justify;">(B) (i) If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, the application shall not be published as provided in paragraph (1).<span style="text-align: left;"> </span></p></blockquote><blockquote><p style="text-align: justify;">(ii) An applicant may rescind a request made under clause (i) at any time.<span style="text-align: left;"> </span></p></blockquote><blockquote><p style="text-align: justify;"><i>... [etcetera, lots more in there]<span style="text-align: left;"> </span></i></p></blockquote><p><span style="text-align: justify;">This whole section and policy makes much more sense to me after our discussion. Patent applications contain tons of trade secret and confidential information, and disclosure can be devastating to inventors, for so many reasons. If disclosure happened at any time, then the patent system would not function; people would stop submitting applications. So it is not surprising that this is a place where agency disclosure of collected trade secrets is tightly controlled. But at the same time, patent law wants people to disclose their inventions to the public. That is the whole point. So of course the Patent Act does <i>both</i>. It </span><span style="text-align: justify;">prohibits</span><span style="text-align: justify;"> public disclosure of patent applications, and then essentially it </span><span style="text-align: justify;">requires</span><span style="text-align: justify;"> disclosure after 18 months unless the applicant takes certain steps.</span></p><p><span style="text-align: justify;">Many thanks again!</span></p>Camilla Hrdyhttp://www.blogger.com/profile/12721860033221697174noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-71504961157752485342022-08-27T14:02:00.010-04:002022-09-22T11:46:00.954-04:00Christopher Morten: Do Federal Agencies Have More Power To "Break" Corporate Secrets Than We Thought?<p style="text-align: justify;">The prevailing wisdom is that federal agencies cannot generally disclose trade secrets and confidential information given to them in confidence by companies that they regulate or work with. Indeed, the Trade Secrets Act (<a href="https://www.law.cornell.edu/uscode/text/18/1905">18 U.S.C. § 1905</a>), passed in 1948, seems on its face to make it a crime for federal government personnel to do so.</p><p style="text-align: justify;">However, in a highly provocative, but ultimately compelling article, <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4041556">"Publicizing Corporate Secrets," forthcoming in the </a><i><a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4041556">University of Pennsylvania Law Review,</a> </i><a href="https://www.law.columbia.edu/faculty/christopher-morten">Christopher Morten</a> of Columbia Law School argues that federal agencies have much more power to publicly disclose trade secrets than is commonly believed. Morten argues that the scope of agencies' power to disclose is defined by their enabling statutes and that, with many important exceptions, several of these enabling statutes do <i>not</i>, at a legislative level, prohibit disclosure of trade secrets or confidential information. Some agencies may have regulations on the books preventing disclosure of trade secrets, but he suggests that they could in some cases change those regulations without additional authorization from Congress, and that there would be far fewer negative consequences for them than we might think if they did so. </p><p style="text-align: justify;">On a very hot day in July, I interviewed Morten about the details of his argument. The interview took place in the air-conditioned NYU Engelberg Center. Many thanks to Katrina Southerland and Mike Weinberg for arranging a space for us. This was a fascinating, lengthy discussion, which I have excerpted below. </p><span><a name='more'></a></span><p style="text-align: justify;"><b>CAH</b>: I take your basic thesis to be that federal agencies have more power to disclose trade secrets than is commonly believed. How did you come to write this paper? </p><p style="text-align: justify;"><b>CM</b>: I was working with the activist organizations on vaccine access in the global South, and we confronted this difficult question: Do we want to leave legal and actual control of COVID vaccine manufacturing entirely in the hands of a small handful of drug companies based in the United States and Europe, or do we want more government institutions and manufacturers around the world to be able to make and distribute vaccines? If we want the latter scenario, then one key question is how do we get the requisite knowledge into their hands? That led me to the realization that, due to Operation Warp Speed, the U.S. government holds significant information about how to make Covid vaccines but that it keeps this information secret. Public Citizen has <a href="https://www.citizen.org/news/report-public-investment-has-given-u-s-government-legal-rights-to-share-nih-moderna-vaccine-information-to-increase-vaccine-production/">shown</a> that because of the government’s exceptionally close collaboration with Moderna, it almost certainly has detailed information on Moderna’s commercial-scale-manufacturing process for mRNA-1273, the vaccine that Moderna and the National Institutes of Health co-invented. That in turn led me to the question of whether it would be legal to take such information, collected from private companies or developed in public-partnerships, and share it with the World Health Organization or other organizations? The fact I could not find a straightforward answer to that legal question led me to this paper. </p><p style="text-align: justify;"><b>CAH</b>: Can you give an example of where an agency or the public might want the agency to disclose trade secrets?</p><p style="text-align: justify;"><b>CM</b>: For the vaccine example, the main agency I was looking at is the Department of Health and Human Services (HHS). Many activist groups and civil society organizations argued that HHS had good reason to share with the World Health Organization all the COVID vaccine manufacturing information it had in its possession, even if that information included trade secrets (or alleged trade secrets). I agreed, and in 2021 I co-wrote <a href="https://www.thenation.com/article/world/covid-vaccines-pharma/">a number of pieces</a> advocating that HHS and the White House explore every legal pathway at their disposal. </p><p style="text-align: justify;">Another good example is the Federal Aviation Administration (FAA). To my knowledge, as of today, Boeing and the FAA both have details about defects in software used in Boeing's 737 Max airplanes that contributed to the crashes of two 737 Max airplanes that killed hundreds of people. Numerous consumer groups and airline industry workers’ organizations have that tried to get some of this information. One, Flyers Rights, filed Freedom of Information Act (FOIA) requests and <a href="https://casetext.com/case/flyers-rights-educ-fund-v-fed-aviation-admin">battled unsuccessfully </a>with the FAA, arguing it had a legal right to see documentation of Boeing’s software. Journalists have asked the FAA for some of this information directly. And none of these interested stakeholders have been able to get this information. The FAA's position has been that the details of Boeing’s software include trade secrets that the agency cannot legally disclose even if it wanted to.</p><p style="text-align: justify;"><span>Yet another example is the Food and Drug Administration (FDA), which holds all kinds of alleged trade secret and confidential commercial information the safety and efficacy of drugs. The agency does disclose important fractions of this information, but not all. Many nonprofits and academics have clamored for them to disclose more, including Amy Kapczynski and me in a <a href="https://www.californialawreview.org/print/the-big-data-regulator-rebooted/">paper</a> that came out last year. But the FDA has consistently said for decades now that it does not have authority to disclose this data because it can’t legally disclose any trade secrets or confidential commercial information. One last FDA example—in early 2020, FDA <a href="https://www.raps.org/news-and-articles/news-articles/2020/2/why-fda-cant-disclose-the-first-coronavirus-relat">announced</a>, somewhat mysteriously, that a COVID drug was in shortage, but it couldn’t disclose the name of the drug or its manufacturer(s) because it is confidential commercial information, and confidential commercial information is simply undisclosable as a matter of law. This even though the shortage made the <a href="https://www.nytimes.com/2020/02/28/health/drug-coronavirus-shortage.html">New York Times </a>and other major papers and was a topic of intense public interest.</span></p><p style="text-align: justify;"><b>CAH</b>: You argue that sometimes the FDA does not have that authority, but sometimes it does... And this for me was the core insight of your paper: Agencies' authority to disclose trade secrets is not governed by norms, it's not even ultimately the regulations that matter; it's the agencies' enabling statutes passed by Congress that dictate their power to disclose trade secrets they collect. </p><p style="text-align: justify;">Obviously statutory interpretation isn't always clear-cut. People can reach different conclusions. With that in mind, can you cite examples of enabling statutes that you think <i>would</i> allow agencies to disclose trade secrets, and then examples of enabling statute that you think would <i>not</i> allow disclosures of trade secrets? I would like to post the full text of some of these in the post so readers can see the statutes and make their own interpretations.</p><p style="text-align: justify;"><b>CM</b>: Yes. I will send you a few examples. [In <a href="https://writtendescription.blogspot.com/2022/09/morten-follow-up-what-do-federal.html">a follow-up blog post, I provide Chris' citations of statutory provisions </a>with links, along with our rather lengthy post-interview exchange about the text of some of these enabling statutes.] </p><p style="text-align: justify;"><b>CAH</b>: I was primed to dismiss your argument because of the Trade Secrets Act in Title 18, Section 1905. It is commonly said that this law makes it <i>illegal</i> for federal employees to disclose companies' trade secrets that the government has in its possession. It says:</p><p></p><blockquote style="text-align: justify;">"Whoever, being an officer or employee of the United States or of any department or agency ...publishes, divulges, discloses, or makes known in any manner or to any extent not authorized by law any information coming to him in the course of his employment or official duties ... which information concerns or relates to the trade secrets [etc...] confidential statistical data...[etc...] of any person, firm, partnership, corporation, or association....except as provided by law; shall be fined under this title, or imprisoned not more than one year, or both; and shall be removed from office or employment."</blockquote><p></p><p style="text-align: justify;"><a href="https://www.law.cornell.edu/uscode/text/18/1905">18 U.S.C. § 1905 (passed in 1948).</a></p><p style="text-align: justify;">Can you talk about why, in your interpretation, that language does not necessarily imprison any government official who discloses trade secrets? </p><p style="text-align: justify;"><b>CM</b>: So, to be clear, my interpretation of Section 1905 is not revolutionary. Others before me have also said that the Trade Secrets Act is not the blanket prohibition on trade secret disclosure that many, or most, people seem to think it is. Two of the important scholars before me are <a href="https://www.yalejreg.com/nc/food-marketing-institute-a-preliminary-assessment-part-ii/">Bernard Bell</a> and <a href="https://jamanetwork.com/journals/jamainternalmedicine/fullarticle/2686147">Matt Herder</a>.<br /></p><p style="text-align: justify;">How I personally came to the conclusion that the Trade Secrets Act permits some disclosure of trade secrets by federal agencies is through my clinical work. Since 2018, I’ve been working with clinic students to litigate and advocate on behalf of clients for broader access to clinical trial data. In the course of this work I encountered Section 1905 in the following way.</p><p style="text-align: justify;">There was, and still is, a federal law on the books enacted in 2007 called the Food and Drug Administration Amendments <a href="https://www.fda.gov/regulatory-information/selected-amendments-fdc-act/food-and-drug-administration-amendments-act-fdaaa-2007">Act</a> that mandates that important information from the majority of significant clinical trials run in the United States be published on the National Institute of Health (NIH) <a href="https://clinicaltrials.gov/">website</a>. When NIH got around to promulgating a rule implementing the statute, it basically said "we are going to demand that drug and device manufacturers submit certain information to us about their products and how they test them, including the assays and other methods they use in their clinical research, and we are going to publish it on our website." The companies then responded, "but that will break our trade secrets and must be illegal." NIH <a href="https://www.federalregister.gov/documents/2016/09/21/2016-22129/clinical-trials-registration-and-results-information-submission">replied</a>, "we hear you, but we don't think this information is truly a trade secret, and in the alternative we are legally authorized to collect and disseminate this information under the law. We don't think the law is a barrier."</p><p style="text-align: justify;">So here was NIH telling the drug and medical device industries "we think we have authority to break your trade secrets because Congress authorized it in the 2007 Act." This cast me back to the agency and admin law literature, where I found that a handful of other agencies that read Section 1905 the way NIH does, and I do. Which is this: Section 1905 clearly prohibits and criminalizes careless or malicious disclosure of trade secret information by government employees, but if the disclosure is authorized under law—e.g., pursuant to an agency rule which is turn within the agency's authority under its enabling statute—then Section1905 does not create a bar to disclosure.</p><p style="text-align: justify;"><b>CAH</b>: Fascinating. It seems obvious in hindsight, when one reads the text. It does seem to limit an illegal disclosure to those "not authorized by law..." and it does say explicitly "except as provided by law..." But I had not personally put those pieces together. I see this interpretation in theory. But of course, in practice, there are a lot of regulations <i>already</i> on the books that would make any disclosure unauthorized, right? So if agencies have regulations already preventing disclosure of trade secrets, regardless of what their enabling statutes allow, what happens? If one of those agencies discloses trade secrets without authority under their own regs, what is the consequence? </p><p style="text-align: justify;"><b>CM</b>: Under that scenario, my view of the law is that disclosure of the trade secret would indeed be unauthorized and thus illegal. Along with Section 1905, which we just talked about, a disclosure without authority would also be a classic Administrative Procedure Act (APA) violation. Agency action in violation of law can be enjoined, and that includes the agency's own regs. </p><p style="text-align: justify;"><b>CAH</b>: What's the remedy for an APA violation? Wrist slap?</p><p style="text-align: justify;"><b>CM</b>: I believe it's injunctive, not monetary.</p><p style="text-align: justify;"><b>CAH</b>: So more, "oops, sorry, take it down" than a real penalty? But often the secret would be out of the bag. So the company would want to stop the disclosure before it occurs, ideally...</p><p style="text-align: justify;"><b>CM</b>: <span style="text-align: left;">Yes, one context where that comes up is the "reverse FOIA" case, where a company brings a court action to prevent an agency from disclosing trade secrets or confidential information in response to a Freedom of information Act request. Although, if you’ll take a bit of detour with me, in my view all of what are called "reverse FOIA" cases are in fact brought under the Administrative Procedure Act (APA) and should be thought of as a simple subset of APA litigations, where the challenged agency action involves potential disclosure of allegedly protected information to a FOIA requester. In all “reverse FOIA” cases, the plaintiffs are really just seeking to stop a disclosure that would be a violation of the APA. Courts sometimes confuse this and apply FOIA case law rather than APA, but really these are APA cases at heart.</span></p><p style="text-align: justify;"><b>CAH</b>: You predicted my next question: FOIA. We have been talking mostly about situations where agencies themselves are making these disclosures. But the pressure to disclose seems more likely to come from outside activists, media, or basically anyone. The <a href="https://www.law.cornell.edu/uscode/text/5/552">Freedom of Information Act</a> allows individuals and organizations to access information collected by federal government agencies. The statute says that each agency "<i>shall</i> make available to the public information as follows..." But then Exemption 4 provides that the agency does not have to allow public access to "trade secrets and commercial or financial information obtained from a person [that is] privileged or confidential." <a href="https://www.law.cornell.edu/uscode/text/5/552">5 U.S.C. § 552(b)(4).</a> The Supreme Court held recently in <i><a href="https://scholar.google.com/scholar_case?case=15976579076878872370&q=argus+leader+media++&hl=en&as_sdt=6,33">Food Marketing Institute v. Argus Leader Media</a> </i>(2019) that this "commercial or financial information" exemption is quite broad with respect to information given to the government in confidence. So wouldn't Exemption 4 mean an agency can always decline to disclose in a FOIA request so long as information was given to the agency in confidence? </p><p style="text-align: justify;"><b>CM</b>: FOIA exemption 4 authorizes the agency to withhold in some circumstances. But it creates discretion to withhold, not a mandate. FOIA itself never says the agency must withhold. Also, even assuming an agency wants to withhold under Exemption 4, this exemption applies narrowly to information that truly qualifies as a trade secret or that was among other things disclosed to the agency in confidence. </p><p style="text-align: justify;"><b>CAH</b>: Ok, so let's talk about the <a href="https://www.law.cornell.edu/constitution/fifth_amendment">Takings Clause</a>. If any federal agency discloses trade secrets, would this be a "taking" of "property" under the Fifth Amendment requiring just compensation? Isn't that what the Supreme Court implied in<i><a href="https://scholar.google.com/scholar_case?case=4542458969053697124&q=rucklehouse+v+monsanto&hl=en&as_sdt=6,33"> Ruckelhaus v. Monsanto</a></i> (1984), where the issue was whether an agency could, pursuant to <i>explicit</i> statutory authority from Congress, disclose trade secrets belonging to Monsanto? That can still be a taking, even though Congress may have authorized it...? If so, how would "just compensation" be calculated and awarded for trade secrets?</p><p style="text-align: justify;"><b>CM</b>: I’ll start by saying that I think, from first principles of constitutional law, trade secrets have a suspect claim to protection under the Takings Clause. I just don’t think they should qualify as “property” for purposes of the Takings Clause. Other protections, such as the Due Process Clause, may apply, but not the Takings Clause. I don’t think this should be a radical view. For example, the Federal Circuit just <a href="https://scholar.google.com/scholar_case?case=15981919687707321211">reaffirmed</a> in 2020 that there’s no taking when the government uses a patent without the patent holder’s permission, and the origins of patents are arguably more “property-like” than trade secrets. Of course, in 1984, the Supreme Court decided <i>Monsanto v. Ruckelshaus </i>and concluded that trade secrets are property for purposes of the Takings Clause. But, in my view, the Court sort of skimmed over that part of the analysis, and the Environmental Protection Agency (EPA) had just conceded that Monsanto's trade secrets were property under the Takings Clause and attempted to fend off liability on other grounds. So I think the Court’s analysis was incomplete, and the fundamental question still begs deeper analysis. If I were a bolder theorist of con law I might argue that trade secrets are not eligible property under the Takings Clause. </p><p style="text-align: justify;">But anyway, I accept <i>Monsanto</i> good law, and so I begin from the premise that trade secrets are indeed “property” eligible for protection under the Takings Clause. But I read <i>Monsanto</i> carefully, and, I think, faithfully. To echo Pam Samuelson, <i>Monsanto</i> is simply not the victory for strong trade secret law that some people think it is—especially trade secret holders’ lawyers. In the actual decision, the Court held the EPA committed a taking only insofar as it disclosed trade secret information that it had told the source that it would keep secret. For a taking to occur, there has to have been an assurance of secrecy from the government. As to certain trade secrets at issue in <i>Monsanto</i>, EPA had not made that promise, and the Court concluded that EPA committed no taking by disclosing those secrets. The takeaway from Monsanto is this: If there's assurance of secrecy when an agency collects the information, then that assurance forms the foundation of a taking if the agency breaks the promise. But if an agency collects information without making such a promise, then there is no taking. So I argue that certain trade secret collection and disclosure is simply not a taking if the agency makes sure not to promise secrecy when it obtains and holds the information in question. </p><p style="text-align: justify;">What if the agency has assured secrecy? Then the agency can still disclose the information so long as the disclosure is for “public use”; it’s bedrock con law that a taking for public use cannot be enjoined. But the “takee” whose secret has been disclosed can bring a takings claim for compensation. There are indeed some tricky remedies questions in cases where there is a taking. Scholars including Katrina Wyman here at NYU have some ideas on <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1011407">how to measure "just compensation"</a> that are relevant to this. The very condensed version of what I say in the paper is that compensation in takings cases is designed only to make the take whole, not to punish the government or discourage future takings. And as I talk about in the normative part of my paper, there are all sorts of things agencies can do to limit the harms, and economic damages, caused by disclosures of confidential information. This is a good thing, I think, as it aligns the agency’s incentives—avoid harmful competitive use of the protected information!—with the trade secret holder’s. It means the agency has to think about that economic harm before it acts.</p><p style="text-align: justify;"><b>CAH</b>: Your interpretation of the takings claim here aligns with the Supreme Court's reading of Exemption 4, I think, in <i><a href="https://scholar.google.com/scholar_case?case=15976579076878872370&q=argus+leader+media++&hl=en&as_sdt=6,33">Argus Leader</a> </i> because it's limited to situations where the government makes that promise of confidentiality. It also aligns with the civil trade secret law view. Trade secrets unlike patents are relational right. There is only a trade secret if there were "reasonable measures" in place to protect the information, including obtaining promises of secrecy where appropriate, and there is only "misappropriation" if there was a duty of confidentiality. Whatever you think about the <i><a href="https://scholar.google.com/scholar_case?case=4542458969053697124&q=rucklehouse+v+monsanto&hl=en&as_sdt=6,33">Monsanto</a></i> opinion, I think most would agree that a trade secret "taking" is just not the same as a taking for a piece of land.</p><p style="text-align: justify;"><b>CM</b>: Yes, and let me just add that Elizabeth Rowe has a really interesting <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1622359">paper</a> in which she argues that agencies can gather and then use or disseminate certain information gathered from certain regulated industries, and that the Takings Clause and other sources of law may not always apply, they may not prohibit all of that disclosure. She then considers the important point that some companies will therefore withhold and not share information with agencies, if they think it's not fully protected from later disclosure. Her paper thinks through this, in a realpolitik way, "Ok, well what sorts of assurances should agencies give to protect their relations with regulated industries? How can they place caveats on what they tell companies about secrecy in order to protect their relationships?" So that is a really interesting paper, and while I don’t agree with all of her policy recommendations or the precise balance between secrecy and disclosure she proposes to strike, I think she gets the law exactly right. So all this is to say that my reading of <i>Monsanto</i> is not one I invented—I’m standing on the shoulders of giants.</p><p style="text-align: justify;"><b>CAH</b>: Ok, so we have done Section 1905, takings, FOIA... What about civil private actions under state or, more likely, federal trade secret law? Can't a government agency or official be sued for damages or at least an injunction if they disclose trade secrets? Say there's a duty of confidentiality, there's a trade secret, why couldn't the company sue the agency under trade secret law? I know you'll talk about sovereign immunity for damages, but what about injunctions under say the <i><a href="https://scholar.google.com/scholar_case?case=15822732193533819720&q=Ex+parte+Young,+209+U.S.+123+(1908),+&hl=en&as_sdt=6,33">Ex Parte Young</a></i> doctrine?</p><p style="text-align: justify;"><b>CM</b>: I do not believe so, no, there's no other injunctive claim available to the aggrieved trade secret holder. That is, I don’t think there’s any legal way to seek an injunction against disclosure of a trade secret or other protected information except through the APA and the Takings Clause, which we’ve already discussed. </p><p style="text-align: justify;">By the way, there’s a terrific recent student <a href="https://www.columbialawreview.org/content/ultra-apa-ultra-vires-review-implied-equitable-actions-for-statutory-violations-by-federal-officials/">note</a> from a Columbia Law student, Alexandra Nickerson, that considers the limited, ex-Parte-Young-esque contexts in which plaintiffs can seek injunctions against government action outside the APA, and I think it’s clear that none of those apply to disclosure of trade secrets. And I’ve never seen such a claim, in my survey of the case law. </p><p style="text-align: justify;">As to damages, we’ve talked about how trade secret holders might be able to claim damages under the Takings Clause, if (only if) the agency has made a promise of secrecy. What about under trade secret law itself? In my view, there’s no simple trade secret misappropriation case that can be brought against the U.S. government; takings is really where the action is. You might think the Defend Trade Secrets Act exposes the government to liability, but there is simply no waiver of sovereign immunity in the DTSA. That statute does not give private actors the ability to bring a trade secret misappropriation claim against the U.S. government. There are a couple interesting separate instances in which trade secret holders have brought cases against the U.S. government under the Federal Tort Claims Act (FTCA), on the theory that the government has, under the FTCA, waived its sovereign immunity to a range of tort claims cognizable at state law. Two courts have permitted FTCA claims to proceed on the theory that the federal government has violated state trade secrets law, though I haven’t found an instance where the trade secret holder actually won on the merits and got paid any damages. This is, I hope, the last bit of doctrinal research I need to complete to finish this work-in-progress paper. But, in any event, the FTCA is only ever going to permit a trade secret holder to claim damages after disclosure occurs, not prevent disclosure, and I think the damages analysis will dovetail what we discussed in the takings context—compensation should simply make the company whole, not punish the government for deciding to disclose the secret. </p><p style="text-align: justify;">One more thought—There are interesting differences between, on one hand, copyrights and patents and, on the other, trade secrets, in the extent of the U.S. government’s waiver of sovereign immunity. For copyrights and patents, Congress enacted Section 1498, a blanket waiver of sovereign immunity that guarantees rights holders an opportunity to seek "reasonable and entire" compensation in the Federal Court of Claims any time the government chooses to use a patented inventions or copyrighted subject matter. We don't have that for trade secrets; for trade secrets, there is no general waiver of sovereign immunity and no specific, Congressionally-created right of action of the trade secret holder to seek damages from the government. Instead, the holder has to do the best it can with the Takings Clause, the APA, and perhaps the FTCA, as we’ve discussed. And as I conclude in the paper, I think the trade secret holder will lose any and all of these challenges if the agency is disclosing a trade secret pursuant to legal authorization under its enabling statute and its own rules, and has made no assurance of secrecy. In other words, I think there are lots of circumstances where agencies can disclose or use private trade secrets and pay no compensation at all. Again, that’s different from patents and copyrights, where the statutory default rule is that the government has to pay for its use.</p><p style="text-align: justify;"><b>CAH [added Sep 2, 2022]</b>: I'll also note that the DTSA has provisions indicating there's generally no suing the federal government for "otherwise lawful" activities...</p><p style="text-align: justify;">The beginning of Section 1833, the whistleblower provision, says that "This chapter does not prohibit or create a private right of action for— (1) any otherwise lawful activity conducted by a governmental entity of the United States, a State, or a political subdivision of a State..." <a href="https://www.law.cornell.edu/uscode/text/18/1833">18 U.S.C. § 1833 (a)(1).</a></p><p style="text-align: justify;">Section 1838 states that the DTSA states it cannot be used to prevent the "otherwise lawful disclosure of information" by government employees under FOIA. So this may imply that the DTSA cannot be used in this context at all, assuming the disclosure is "lawful" for all the reasons we talked about. TBD, of course... <a href="https://www.law.cornell.edu/uscode/text/18/1838">The DTSA § 1838</a> provides that—except with respect to a new provision creating immunity for whistleblowers— “this chapter shall not be construed to preempt or displace any other remedies, whether civil or criminal, provided by United States Federal, State, commonwealth, possession, or territory law for the misappropriation of a trade secret, <i>or to affect the otherwise lawful disclosure of information by any Government employee under section 552 of title 5 (commonly known as the Freedom of Information Act.</i>" 18 U.S.C. § 1838 (2016) (emphasis added).</p><p style="text-align: justify;"><b>CAH</b>: So, we've gone through all of the hurdles: Section 1905, the APA, Exemption 4, the Takings Clause, and DTSA. This world is still hypothetical. But I think you have convinced me there could be more disclosure of government-held trade secrets than we have now if government wanted to do so. In summary, federal agencies can disclose trade secrets and confidential information if they want to, so long as it is in their statutory authority to do so, so long as they write their regulations appropriately, and so as long as they deal with companies on a transparent basis in which they are upfront about their policies and don't make assurances of secrecy. </p><p style="text-align: justify;">Anything else you want to say?</p><p style="text-align: justify;"><b>CM</b>: Two things. First is another example of an agency that I think has interesting, little-used authority to "break" trade secrets is the HHS <a href="https://www.hhs.gov/ocr/index.html">Office for Civil Rights (OCR).</a> OCR is an investigative agency that, among other things, is the country’s primary federal enforcer of HIPAA. Based on my reading of the enabling statute and regs on the books, I think there is a strong argument that OCR and HHS more broadly has authority to re-write regs and policies in ways that allow OCR to gather and disclose information on how health systems and their tech company “business associates” are processing and exploiting sensitive medical data, even if those health systems and (especially) tech companies assert trade secrets in the information. HHS OCR may be just one of the federal agencies and offices that have broader information-gathering and information-disseminating powers than we typically talk about. Second, I want to be clear that I think agencies’ trade secret “breaking” authority should be used carefully! For most agencies, it should be used in only a small handful of cases. I am not trying to throw a big bombshell into how agencies do things.</p><p style="text-align: justify;"><b>CAH</b>: This is not a .gov Wikileaks.</p><p style="text-align: justify;"><b>CM</b>: <span style="text-align: left;">Right. </span><span style="text-align: left;">Right now, I think it's a small set of situations where the public needs to know and where the agency and people requesting the information can handle the information responsibility. This will not mean widespread disclosure of every trade secret under the sun. I dedicate a whole Part of the paper—Part II—to thinking through how agencies could share trade secret information responsibly, with journalists, noncommercial researchers, and so on, in ways that protect the information from commercial use by competitors. In short, I propose agencies undertake carefully controlled sharing of trade secrets to select information users—what I deem “information publicity”—rather than blunt, unconditional disclosure to the world. “Information publicity” gives the paper its title. This Part of the paper builds on privacy law scholarship, especially the work of folks like <a href="https://www.sup.org/books/title/?id=8862">Helen Nissenbaum</a> and <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=283924">Daniel Solove</a>, and my bridge to the privacy literature in turn depended on the work of <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1087145">Sharon Sandeen</a>, <a href="https://www.jstor.org/stable/1229511#metadata_info_tab_contents">Pamela Samuelson</a>, and others who’ve noted the deep theoretical and doctrinal links between privacy law and trade secret law. To adapt Nissenbaum, Part II basically proposes “contextual integrity for trade secrets.” More standing on the shoulders of giants.</span></p><p style="text-align: justify;"><b>CAH</b>: I forgot to mention expiration. A lot of information only has value for a certain amount of time. This makes me more amenable to your proposal. As a practical matter, a lot of trade secrets and confidential information "sunsets." Some of it seems more like it belongs in a museum than in a vault.</p><p style="text-align: justify;"><b>CM</b>: Agreed, as you and <a href="https://law.stanford.edu/publications/abandoning-trade-secrets/">Mark Lemley </a>have shown. There is a period of time for this information. Not all of it needs to be secret forever. </p><p style="text-align: justify;"><b>CAH</b>: Thank you, I will be in touch about the enabling statutes.</p><p><span></span></p><p style="text-align: justify;"><br /></p><blockquote><p></p></blockquote><p style="text-align: justify;"><br /></p>Camilla Hrdyhttp://www.blogger.com/profile/12721860033221697174noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-21156997832410702232022-06-28T15:22:00.002-04:002022-06-28T15:22:50.352-04:0020 Years of Trade Secrets Scholarship <p>Professor Sharon Sandeen, at Mitchell Hamline School of Law, has posted an ongoing <a href="https://open.mitchellhamline.edu/facsch/527/">bibliography</a> of trade secrets scholarship. It is pretty amazing. It includes books, book chapters, law review articles, and non-law review articles such as blog posts. It contains links for many of the documents and complete citations. The bibliography looks only at relatively modern sources, from 2002-2022. Other major sources for trade secret law and scholarship include statutes and legislative history (e.g. <a href="https://www.wipo.int/edocs/lexdocs/laws/en/us/us034en.pdf">UTSA</a> Commentary, <a href="https://www.congress.gov/bill/114th-congress/senate-bill/1890/committees">DTSA</a> Senate and House Reports) as well as many excellent treatises available through Westlaw or Lexis, including <a href="https://www.google.com/search?q=milgrim+bensen+on+trade+secrets&rlz=1C5CHFA_enUS907US909&sxsrf=ALiCzsbxeCPH1C_MwUJr7wNFqcPgDshg-A%3A1656078488437&ei=mMC1YtqhGrCJptQPqO-V6AU&ved=0ahUKEwjazZeQncb4AhWwhIkEHah3BV0Q4dUDCA4&uact=5&oq=milgrim+bensen+on+trade+secrets&gs_lcp=Cgdnd3Mtd2l6EAM6CAguEIAEELADOggIABCwAxCGA0oECEEYAUoECEYYAFDSA1jcCmCLDGgBcAB4AIABXYgBvgSSAQE3mAEAoAEByAEEwAEB&sclient=gws-wiz">Milgrim & Bensen</a>, <a href="https://store.legal.thomsonreuters.com/law-products/Treatises/Trade-Secrets-Law/p/100027609">Jager</a>, and <a href="https://store.lexisnexis.com/products/trade-secrets-law-and-practice-skuusSku-us-oxf-04645-Softbound?gclid=CjwKCAjwwdWVBhA4EiwAjcYJEF1v5Y9ZNUOj7Kg2pZ_Ayi8WuHMQiYAlBtHlXzTPO_LMwQ39d0CXiBoCe7AQAvD_BwE">Quinto</a> et al. (There's also a <a href="https://www.barnesandnoble.com/w/trade-secrets-james-pooley/1003390104">Pooley</a> treatise, though the author has other <a href="https://pooley.com/publications/">publications</a> that are more easily accessible.)</p><p>Professor Sandeen produced this <a href="https://open.mitchellhamline.edu/facsch/527/">bibliography</a> with the help of Mitchell Hamline students Arneda Perkins and Amy Gustafson, and Mitchell Hamline research librarian Alisha Hennen. </p>Camilla Hrdyhttp://www.blogger.com/profile/12721860033221697174noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-1552369579893054292022-06-08T08:23:00.000-04:002022-06-08T08:23:25.380-04:00What does ending the COVID-19 pandemic mean from a legal perspective?<p><b>By <a href="https://law.stanford.edu/directory/lisa-larrimore-ouellette/">Lisa Larrimore Ouellette</a>, <a href="https://www.law.umich.edu/FacultyBio/Pages/FacultyBio.aspx?FacID=wnp">Nicholson Price</a>, <a href="https://law.wustl.edu/faculty-staff-directory/profile/rachel-sachs/">Rachel Sachs</a>, and <a href="https://law.illinois.edu/faculty-research/faculty-profiles/jacob-s-sherkow/">Jacob S. Sherkow</a></b></p><p>The COVID-19 pandemic isn’t over. The United States is <a href="https://www.nytimes.com/interactive/2021/us/covid-cases.html">averaging around 100,000 new cases per day</a> and recently marked 1 million total deaths, and global deaths associated with the pandemic are <a href="https://www.who.int/data/stories/global-excess-deaths-associated-with-covid-19-january-2020-december-2021">estimated at nearly 15 million</a>. But the U.S. legal response to the pandemic appears to be winding down, with <a href="https://www.washingtonpost.com/health/2022/05/09/mask-mandate-covid-cases/">mask mandates disappearing</a>, an uncertain congressional response, <a href="https://www.pbs.org/newshour/nation/as-covid-funding-runs-out-u-s-could-see-rationing-of-supplies">COVID relief money running out</a>, the end of most <a href="https://www.nashp.org/governors-prioritize-health-for-all/">emergency orders at the state level</a>, and calls for an <a href="https://www.npr.org/2022/02/14/1080303338/republicans-call-on-biden-to-end-covids-public-health-emergency-designation">end to federal emergency declarations</a>. In this post, we examine COVID-related public health emergency declarations, what ending those would mean from a legal perspective, and what impact that would have on pandemic innovation policy, including access to existing COVID innovations and incentives to develop new ones.</p><p><b>What are the major COVID-19 emergency declarations?</b></p><p>Broadly speaking, public health emergency declarations give governments the power to <a href="https://journals.sagepub.com/doi/full/10.1177/1073110519857328">“activate funds, personnel, and material and change the legal landscape to aid in the response to a public health threat,”</a> generally in a manner legally different from typical law- or rule-making processes. Because public health measures often are (and need to be) wide-ranging, federal, state, tribal, and local governments all have the power to issue such declarations. And even within a given government authority, individual agencies often possess complementary but different powers to issue their own public health emergency declarations. COVID-19 has consequently prompted a large number of distinct emergency declarations, each with different legal effects.<span></span></p><a name='more'></a><p></p><p><b><i>National emergency declaration.</i></b> <a href="https://www.law.cornell.edu/uscode/text/50/1621">Section 201 of the National Emergencies Act</a> authorizes the President to declare a national emergency—an act that implicates a wide variety of other federal laws, including those pertaining to the use of federal employees and property, as well as the responsibilities of military personnel. President Trump <a href="https://trumpwhitehouse.archives.gov/presidential-actions/proclamation-declaring-national-emergency-concerning-novel-coronavirus-disease-covid-19-outbreak/">issued such a declaration</a> for COVID-19 on March 13, 2020, with the most recent annual continuation <a href="https://www.federalregister.gov/documents/2022/02/23/2022-03972/continuation-of-the-national-emergency-concerning-the-coronavirus-disease-2019-covid-19-pandemic">signed by President Biden</a> on February 23, 2022. Such a declaration can only be terminated by the President or by a joint resolution of Congress ending the emergency, something the <a href="https://www.fiercehealthcare.com/providers/senate-narrow-votes-get-rid-covid-19-national-emergency">Senate tried to do in March</a>, but that has apparently since <a href="https://www.congress.gov/bill/117th-congress/house-joint-resolution/46">stalled in the House</a>.</p><p><b><i>Public health emergency declaration.</i></b> Separately, <a href="https://www.law.cornell.edu/uscode/text/42/247d">§ 319 of the Public Health Service Act</a> allows the Secretary of Health and Human Services (HHS) to declare “a public health emergency, including significant outbreaks of infectious diseases,” which Secretary Azar did on <a href="https://www.phe.gov/emergency/news/healthactions/phe/Pages/2019-nCoV.aspx">January 31, 2020</a>. Generally, this allows HHS access to the Public Health Emergency Fund, a <a href="https://www.npr.org/sections/health-shots/2016/06/03/480565668/a-permanent-fund-to-help-fight-zika-exists-but-its-empty">chronically underfunded fisc</a> established for the purpose of short-term public health emergencies. Interestingly, this was not the fund used by Congress to bankroll COVID-19 relief. Instead, early in the pandemic, Congress passed the CARES Act, establishing a <i>separate</i> series of funds, including the <a href="https://www.congress.gov/bill/116th-congress/house-bill/748">Public Health and Social Services Emergency Fund</a> (PHSSEF), “to <a href="https://www.ncsl.org/Portals/1/Documents/statefed/COVID-Econ_Relief_Bill.pdf">support testing and contact tracing</a> to effectively monitor and suppress COVID-19, as well as to reimburse for health care-related expenses or lost revenue attributable to the coronavirus.” Funds for some activities under the PHSSEF last until certain set deadlines; others until they are expended. But none, it seems, are directly tied to the expiration of a public health emergency. Nonetheless, the PHSSEF and § 319’s public health emergency declaration likely go in tandem; it is doubtful Congress will re-fund any portion of the PHSSEF once the § 319 declaration lapses. And HHS’s § 319 declaration must be renewed every 90 days—as <a href="https://aspr.hhs.gov/legal/PHE/Pages/COVID19-12Apr2022.aspx">it has been since the pandemic began</a>. Its most recent iteration is set to expire on July 15, 2022, but HHS has committed to providing at least <a href="https://www.fiercehealthcare.com/providers/becerra-shoots-down-giving-more-60-day-notice-ending-covid-19-public-health-emergency">60 days of notice</a> before it ceases to renew it.</p><p>Together, the national emergency and public health emergency declarations trigger <a href="https://www.law.cornell.edu/uscode/text/42/1320b-5">section 1135 of the Social Security Act</a>, authorizing HHS to waive certain requirements during emergencies. This authorization includes <a href="https://www.cms.gov/Medicare/Provider-Enrollment-and-Certification/SurveyCertEmergPrep/1135-Waivers">1135 waivers</a> to certain Medicare, Medicaid, and Children’s Health Insurance Program (CHIP) requirements and <a href="https://www.cms.gov/files/document/covid-19-emergency-declaration-waivers.pdf">numerous other COVID-19 related waivers</a>, including waivers to reimburse more telehealth services. And under the <a href="https://www.congress.gov/bill/117th-congress/house-bill/2471/text?r=31&s=1">2022 omnibus appropriations bill</a>, telehealth reimbursement rules will remain in place for 151 days after the end of the public health emergency, providing more time to transition. Section 1135 is also the trigger for increasing the Medicaid Federal Medical Assistance Percentage (FMAP), a rate used to match state funds allocated to certain medical services, by 6.2 percentage points under section 6008 of the <a href="https://www.congress.gov/116/plaws/publ127/PLAW-116publ127.pdf">Families First Coronavirus Response Act</a>. States that want to take advantage of the increased FMAP must agree to a set of conditions, including continuous enrollment: they generally cannot disenroll anyone from their Medicaid programs while the declared emergency continues.</p><p><b><i>Emergency use authorization declaration.</i></b> Beyond these declarations, there are others available to HHS, including those under section <a href="https://www.law.cornell.edu/uscode/text/21/360bbb-3">564 of the Food, Drug, and Cosmetic Act</a>, which allow FDA to use Emergency Use Authorizations (EUAs) as the <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3792217">basis to authorize not otherwise approved drugs</a>, devices, and other therapies. This authority—<a href="https://www.fda.gov/emergency-preparedness-and-response/mcm-legal-regulatory-and-policy-framework/emergency-use-authorization#othercurrenteuas">used previously in other public health emergencies</a>—remains in effect until terminated by HHS. For COVID-19, HHS has issued EUA declarations for <a href="https://www.federalregister.gov/documents/2020/02/07/2020-02496/determination-of-public-health-emergency">diagnostics</a>, <a href="https://www.federalregister.gov/documents/2020/03/10/2020-04823/emergency-use-declaration">PPE</a>, <a href="https://www.federalregister.gov/documents/2020/03/27/2020-06541/emergency-use-authorization-declaration">medical devices</a>, and <a href="https://www.federalregister.gov/documents/2020/04/01/2020-06905/emergency-use-authorization-declaration">drugs and biological products like vaccines</a>.</p><p><b><i>Public Readiness and Emergency Preparedness Act declaration.</i></b> <a href="https://www.law.cornell.edu/uscode/text/42/247d-6d">Section 319F-3 of the Public Health Service Act</a> is yet another emergency declaration statute under HHS, which provides for liability protection for government workers and contractors for pandemic-related countermeasures. The <a href="https://www.federalregister.gov/documents/2022/01/07/2022-00151/tenth-amendment-to-declaration-under-the-public-readiness-and-emergency-preparedness-act-for-medical">tenth amendment</a> to this declaration was issued in January 2022 and has a current end date of October 1, 2024.</p><p><b><i>Tribal emergency declarations.</i></b> Beyond the federal government, <a href="https://www.ncbi.nlm.nih.gov/pmc/articles/PMC4703113/">tribal authorities also have the power to issue their own public health emergency declarations</a>. The Navajo Nation, for example, <a href="https://www.ndoh.navajo-nsn.gov/Portals/0/COVID-19/News/NNExecutiveOrderNo001-20.Updated.pdf?ver=CxXC5FtoUxYcaF9gVLPRjw%3d%3d">issued such a declaration on March 13, 2020</a>, giving the tribe’s President and Vice President broad powers to promulgate executive orders related to the pandemic, <a href="https://www.ndoh.navajo-nsn.gov/COVID-19/News-Update">including school closures</a>, gathering limits, and masking requirements.</p><p><b><i>State emergency declarations.</i></b> Similarly, every state has also invoked state law emergency powers during the COVID-19 pandemic, including those pertaining to proof of vaccination, masking, and a variety of other public health measures. As the Delta wave began to wane in the summer of 2021, however, many of these were revoked. As of May 27, 2022, only <a href="https://www.nashp.org/governors-prioritize-health-for-all/">14 states still had broad emergency orders</a> in place, with many set to expire this summer unless otherwise renewed.</p><p><b><i>Local emergency declarations.</i></b> On top of all of these, individual localities—such as Santa Clara County (population, 1.9 million people)—have yet their <i>own</i> power to proclaim a public health emergency. Santa Clara County initially declared a public health emergency in response to <a href="https://www.mercurynews.com/2020/02/10/coronavirus-public-risk-still-low-but-santa-clara-county-declares-local-emergency-to-prepare/">COVID-19 on February 3, 2020</a>, over a month before the federal government’s national emergency declaration, kicking off a host of rules pertaining to the opening (and closing) or certain businesses, social distancing rules, and testing locations. While the County hasn’t rescinded its original emergency order, it has since terminated many of the original provisions from its original emergency declaration, including the <a href="https://covid19.sccgov.org/order-health-officer-02-28-2022-rescission-of-face-covering-order">use of masks indoors</a>.</p><p><b>What will the end of the legal response to the pandemic mean for access to COVID-related medical care?</b></p><p>Because many of these legal authorities are formally independent of each other, they do not need to be (and have not been) wound down simultaneously. Many states, for example, have rescinded their emergency declarations while the federal government has continued to reauthorize its § 319 declaration. But as the ongoing emergency declarations are wound down, a range of outcomes related to access to medical care are worth considering. We examine just three here, though there are <a href="https://www.kff.org/coronavirus-covid-19/issue-brief/what-happens-when-covid-19-emergency-declarations-end-implications-for-coverage-costs-and-access/">many others</a>.</p><p>First, with the end of the § 319 declaration comes an end to the requirement that states maintain continuous enrollment in their Medicaid programs if they wish to retain the increased FMAP funding. A recent Kaiser Family Foundation (KFF) analysis estimated that Medicaid enrollment will have risen during the pandemic by 25%, to more than 110 million Americans, by the end of fiscal year 2022, attributing most of this growth to the continuous enrollment requirements. But KFF goes on to estimate that between <a href="https://www.kff.org/medicaid/press-release/kff-analysts-find-that-between-5-3-million-and-14-2-million-people-could-lose-medicaid-coverage-following-the-end-of-the-public-health-emergency-and-continuous-enrollment-requirement-with-an-unknown/">5.3 million and 14.2 million</a> people are likely to lose Medicaid coverage when the pandemic ends, as states begin to conduct eligibility redeterminations. Because the redetermination process is complex and burdensome for patients, there is <a href="https://www.theguardian.com/us-news/2022/may/26/millions-risk-losing-us-healthcare-when-pandemic-emergency-declaration-expires">substantial concern</a> that this process may lead to otherwise eligible beneficiaries losing their coverage, or beneficiaries losing their coverage without knowing it. This is likely to have an especially detrimental impact on women and people of color, and could <a href="https://aspe.hhs.gov/sites/default/files/private/pdf/265366/medicaid-churning-ib.pdf">particularly exacerbate</a> an ongoing perinatal mortality crisis, as in many states people who have recently given birth can lose their Medicaid coverage just 60 days after giving birth. The significant racial disparities in perinatal mortality suggest that these problems are likely to be most acute for non-white patients.</p><p>A second implication of the end of the § 319 declaration would be significant rollbacks in the availability of <a href="https://www.kff.org/medicare/issue-brief/faqs-on-medicare-coverage-of-telehealth/">telehealth</a>, impacting patient access to care. Before the pandemic, telehealth usage among Medicare beneficiaries in particular was low, as reimbursement for telehealth services had been limited in a range of ways (e.g., it was primarily available for rural beneficiaries, it could only be used for a limited set of services, etc.). The CARES Act included new authority for telehealth flexibilities, which had the effect of significantly expanding both the set of services that can be reimbursed through telehealth and the set of patients and providers eligible for its use. These flexibilities are currently scheduled to end 151 days (approximately five months) after the end of the § 319 declaration, at which point reimbursement for telehealth services will return to a more limited form, making access more difficult for seniors and other Medicare beneficiaries, as well as <a href="https://www.kff.org/coronavirus-covid-19/issue-brief/state-efforts-to-expand-medicaid-coverage-access-to-telehealth-in-response-to-covid-19/">Medicaid recipients</a>.</p><p>Third, if PHSSEF and similar funding is not continued, Americans’ ability to receive vaccines, rapid tests, and N95 masks for free would be jeopardized. The federal government is planning for a “<a href="https://www.nytimes.com/2022/05/06/us/politics/covid-aid-vaccines-white-house.html">bare-bones vaccination program</a> that would cover just older Americans and those with compromised immune systems,” and would not include federal funding for boosters or updated versions of vaccines to address new variants. To be sure, Americans with private insurance would likely still have the ability to receive vaccines for free through their health insurance, thanks to a provision of the <a href="https://aspe.hhs.gov/sites/default/files/documents/786fa55a84e7e3833961933124d70dd2/preventive-services-ib-2022.pdf">Affordable Care Act</a> which requires it. But Medicaid coverage <a href="https://jamanetwork.com/journals/jamanetworkopen/fullarticle/2764810">isn’t required</a> for adult vaccination. It would also be moving vaccination and testing from the world of <a href="https://writtendescription.blogspot.com/2020/08/are-covid-19-vaccine-advance-purchases.html">federal procurement</a> (where the federal government can leverage its purchasing power) to a more typical system of drug procurement, with the associated increased transaction costs. Ultimately, White House officials have acknowledged that it would likely become <a href="https://www.cnbc.com/2022/05/18/covid-us-faces-unnecessary-deaths-if-congress-fails-to-pass-funding-bill.html">more difficult</a> to access certain products and treatments if funding lapses, and could <a href="https://www.nytimes.com/2022/04/18/us/politics/covid-vaccine-doses-funding-congress.html">jeopardize U.S. efforts</a> to engage in global aid and support.</p><p><b>What will the end of the legal response to the pandemic mean for existing and new COVID-related diagnostics, therapeutics, and vaccines?</b></p><p>The end of legal responses to the pandemic could also profoundly change the innovation landscape for COVID-related biomedical products in terms of both access and incentives.</p><p>Access faces the most obvious challenges. Most starkly, if and when HHS terminates its section 564 EUA declaration, the hundreds of COVID-related products <a href="https://www.fda.gov/emergency-preparedness-and-response/mcm-legal-regulatory-and-policy-framework/emergency-use-authorization#covid19euas">subject to EUAs</a> would <a href="https://www.fda.gov/emergency-preparedness-and-response/mcm-legal-regulatory-and-policy-framework/faqs-what-happens-euas-when-public-health-emergency-ends/">no longer be available</a> unless they are first granted full approval or clearance, the way the Pfizer and Moderna vaccines have been for adult patients. (We’ve <a href="https://writtendescription.blogspot.com/2021/06/whats-difference-between-vaccine.html">previously explained</a> the difference between vaccine approval and authorization.) To be sure, there are some benefits to requiring manufacturers to go through more robust premarket processes; there’s <a href="https://writtendescription.blogspot.com/2020/06/how-can-health-regulators-maintain.html">a reason</a> EUAs are for emergencies and the FDA normally requires approval or clearance. But it’s a tricky balance to make sure firms undertake the costs of <a href="https://repository.law.umich.edu/cgi/viewcontent.cgi?article=1087&context=mttlr">generating and demonstrating</a> high-quality information on safety and efficacy (buttressed here, hopefully, by high-quality confirmatory evidence) while making sure there’s enough notice and enough incentive to keep marketing to avoid substantial access disruptions. This is not lost on the FDA. The agency has begun <a href="https://www.fda.gov/media/155039/download">transition planning</a> to account for this process; among other things, the agency intends to allow manufacturers currently under an EUA to continue distributing devices while their regulatory submissions are under review by the FDA. And recognizing the challenge of balancing quality and access in this context, the FDA <a href="https://www.federalregister.gov/documents/2021/12/23/2021-27891/transition-plan-for-medical-devices-issued-emergency-use-authorizations-during-the-coronavirus">recently sought comments</a> on the transition plan. Terminating the EUA declarations is distinct from any termination of the public health emergency, including HHS’s § 319 declaration. Thus, despite the termination of other emergency declarations, the EUA authorization can—and almost certainly should—last longer than others. This has been true for <a href="https://www.fda.gov/emergency-preparedness-and-response/mcm-legal-regulatory-and-policy-framework/emergency-use-authorization#othercurrenteuas">EUAs for other diseases</a>, such as Zika, Ebola, and Anthrax, long after the acute phase of their respective public health emergencies ended.</p><p>The availability of payment under emergency declarations also shapes both access and incentives for COVID-related products. As described above, government payments for COVID products are likely to be sharply curtailed, decreasing access for many. And that decreased access will substantially decrease the incentives to develop new products in response to the evolving pandemic, like <a href="https://writtendescription.blogspot.com/2021/03/how-are-covid-19-vaccine-developers-and.html">vaccines for variants</a> or <a href="https://writtendescription.blogspot.com/2021/11/molnupiravir-may-become-first-covid-19.html">new therapeutics</a>. Manufacturers, of course, respond to these incentives and to the <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3441247">size of potential markets</a>. If fewer people are likely to be able to afford a new vaccine or therapeutic—and if the federal government is not ready to step in as a major purchaser—manufacturers are likely to have lower incentives to develop new products. And even if they do develop them, they are less likely to take efforts to make them <a href="https://writtendescription.blogspot.com/2020/08/are-covid-19-vaccine-advance-purchases.html">quickly at the scales</a> we’ve previously seen. While we have focused on US incentives here, decreased US incentives also <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2745632">decrease incentives</a> for development in general, given the scale of US purchasing—a bad result for global production and, indeed, global equity (already a <a href="https://writtendescription.blogspot.com/2021/07/whats-happening-with-proposals-for-wto.html">deeply problematic area</a> of pandemic response).</p><p>Finally, the hastening and seemingly premature efforts to end legal responses to the pandemic are a sign of decreased interest in both dealing with COVID-19 and, likely, future pandemics. The Biden administration released the <a href="https://www.whitehouse.gov/wp-content/uploads/2021/09/American-Pandemic-Preparedness-Transforming-Our-Capabilities-Final-For-Web.pdf?page=29">American Pandemic Preparedness</a> plan in fall of 2021. While that plan had a mixture of strengths and areas for improvement, it focused in part on creating better incentives for the development of products and research strategies <a href="https://writtendescription.blogspot.com/2021/09/how-would-proposed-american-pandemic.html">for pandemics going forward</a>. That plan may still be <a href="https://www.youtube.com/watch?v=xbE8E1ez97M">alive and kicking</a>, but Congressional lassitude and resistance to COVID spending does not bode well for its robust implementation. The absence of strong policy incentives will likely dampen incentives for R&D related to other diseases with pandemic potential. New policy incentives may not be essential for every product—COVID vaccines are among <a href="https://www.npr.org/2021/11/24/1059041725/covid-vaccines-are-set-to-be-among-the-most-lucrative-pharmaceutical-products-ev">the most lucrative drugs</a> ever developed, in part due to <a href="https://writtendescription.blogspot.com/2020/08/multi-agency-funding-for-covid-19.html">strong and multi-faceted incentives</a>—but, as we have seen, a focus purely on vaccines (especially for diseases that change as COVID does) has <a href="https://www.nytimes.com/2022/05/31/health/omicron-deaths-age-65-elderly.html">substantial limitations</a>. </p><p>The development of <a href="https://writtendescription.blogspot.com/2021/11/molnupiravir-may-become-first-covid-19.html">therapeutics</a> and vaccines for COVID has been nothing short of <a href="https://www.statnews.com/2022/02/14/why-covid-19-vaccines-are-a-freaking-miracle/">miraculous</a>; efforts to provide widespread access in the US have been remarkably impressive even if <a href="https://writtendescription.blogspot.com/2020/06/how-can-government-improve-access-to.html">not</a> <a href="https://writtendescription.blogspot.com/2020/06/structural-racism-and-covid-19.html">flawless</a>. It would be a shame if policymakers stepped back now. Here’s hoping they don’t.</p><p><i>This post is part of a <a href="https://writtendescription.blogspot.com/p/covid-19.html">series on COVID-19 innovation law and policy</a>. Author order is rotated with each post.</i></p>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-41938124749435412502022-03-03T09:43:00.000-05:002022-03-03T09:43:05.898-05:00How do we encourage innovation on “long COVID”?<p><b>By <a href="https://law.illinois.edu/faculty-research/faculty-profiles/jacob-s-sherkow/">Jacob S. Sherkow</a>, <a href="https://law.stanford.edu/directory/lisa-larrimore-ouellette/">Lisa Larrimore Ouellette</a>, <a href="https://www.law.umich.edu/FacultyBio/Pages/FacultyBio.aspx?FacID=wnp">Nicholson Price</a>, and <a href="https://law.wustl.edu/faculty-staff-directory/profile/rachel-sachs/">Rachel Sachs</a></b></p><p>Since the pandemic began, numerous recovered COVID-19 patients have reported having “long COVID”: COVID-19 symptoms persisting well beyond the underlying viral infection period. Whether such a condition is specific to COVID-19, or more generally a form of “post-acute sequelae”—or even a discernable condition—has <a href="https://www.npr.org/sections/goatsandsoda/2021/11/18/1055071699/coronavirus-faq-what-is-long-covid-and-what-is-my-risk-of-getting-it">bedeviled scientists and clinicians alike</a>. The fact remains, though, that likely millions of people in the U.S. alone will continue to report a variety of challenging symptoms more than 6 months after they’re infected. Despite this magnitude of reports, confusion regarding defining the condition and identifying its etiological basis has presented significant challenges to innovating treatments for it. In this post, we explore some of the current evidence surrounding “long COVID,” some of the difficulties in developing long COVID treatments, and how policymakers can move things along.<span></span></p><a name='more'></a><p></p><p><b>What’s the current evidence for long COVID and how prevalent is it?</b></p><p>Figuring out what long COVID <i>is</i> has proved frustratingly elusive. The CDC uses “long COVID”—or “<a href="https://www.cdc.gov/coronavirus/2019-ncov/long-term-effects/index.html">post-COVID conditions</a>”—as an umbrella term for a range of health problems experienced <i>4 or more weeks</i> after infection, including shortness of breath, fatigue, “<a href="https://www.statnews.com/2022/01/28/long-covid-brain-fog-chemo-brain/?utm_source=STAT+Newsletters&utm_campaign=0c18d8ceb1-Daily_Recap&utm_medium=email&utm_term=0_8cab1d7961-0c18d8ceb1-149794541">brain fog</a>,” “<a href="https://www.nytimes.com/2022/02/12/well/move/long-covid-exercise.html">post-exertional malaise</a>,” cough, headache, diarrhea, dizziness, changes in smell, and more. Guidance from the UK’s <a href="https://www.nice.org.uk/guidance/ng188/chapter/Recommendations">National Institute for Health and Care Excellence (NICE)</a> draws a distinction between “ongoing symptomatic COVID-19” from 4 to 12 weeks after infection, and “post-COVID-19 syndrome” for symptoms that continue for more than 12 weeks. In November 2021, NICE published detailed evidence reviews on <a href="https://files.magicapp.org/guideline/08d10c67-1331-4146-9471-b15d1d93e707/files/Case_definition_evidence_review_Final_r400911.pdf">defining post-COVID-19 syndrome</a> and the <a href="https://files.magicapp.org/guideline/08d10c67-1331-4146-9471-b15d1d93e707/files/Evidence_review__signs_symptoms_prevalence_FINAL_r400908.pdf">most prevalent symptoms</a>, both of which noted the low quality of the existing evidence base. In particular, most long COVID studies are cross-sectional retrospective surveys of self-reported symptoms, which increases the risk of recall bias. These studies have also almost exclusively been conducted in high-income countries, and survey respondents are not even representative of the populations within those countries: they have mostly been white, female, and of higher socioeconomic status.</p><p>SARS-CoV-2 is not the only virus that results in long-term reported symptoms—generally known as “post-acute sequelae”—although the risk of sequelae after COVID-19 <a href="https://journals.plos.org/plosmedicine/article?id=10.1371/journal.pmed.1003773">appears higher</a> than the risk after influenza, suggesting that long COVID might not just be a general post-viral complication. But the lack of a consistent case definition has confounded studies, and the risk of biased surveys was recently illustrated by a recent <a href="https://jamanetwork.com/journals/jamainternalmedicine/fullarticle/2785832">French study</a> that suggested that reporting long COVID symptoms “may be associated more with the belief in having been infected with SARS-CoV-2 than with having laboratory-confirmed COVID-19 infection.” Some researchers have thus focused on more objective markers of persistent clinical symptoms, which still leaves “<a href="https://www.nature.com/articles/s41590-021-01104-y">many available hypotheses</a>” to explain COVID’s long-term effects—to the understandable <a href="https://www.thelancet.com/journals/laninf/article/PIIS1473-3099(21)00333-9/fulltext">frustration</a> of patients who are looking for more answers from the medical community.</p><p>An improved clinical understanding of what long COVID is—and how to treat it—will become even more important as people recover from the massive Omicron wave that has been circling the globe. While few long COVID cases result in hospitalization, some are serious, and they may put further strain on an already splintering healthcare system. Long COVID is also affecting many individuals’ ability to go back to work—in some cases, due to <a href="https://www.nytimes.com/2021/12/03/health/long-covid-treatment.html?utm_source=STAT+Newsletters&utm_campaign=1ac774787b-MR_COPY_01&utm_medium=email&utm_term=0_8cab1d7961-1ac774787b-149794541">cognitive impairments</a>—and may be <a href="https://www.brookings.edu/research/is-long-covid-worsening-the-labor-shortage/">exacerbating the current labor shortage</a>. Patients are also <a href="https://www.motherjones.com/politics/2022/01/desperate-patients-are-shelling-out-thousands-for-a-long-covid-cure-is-it-for-real">desperate for treatments</a> and sometimes turning to ineffective “alternative” therapies, which could create additional health risks.</p><p><b>What are the innovation challenges for developing therapies for long COVID?</b></p><p>Developing therapies for long COVID involves several interlinked challenges relating to definitions, reimbursement, clinical trials, competing incentives, and non-excludable treatments.</p><p>Perhaps the biggest challenge involves concretely defining long COVID. Medicine is typically bad at defining chronic conditions with variable and often non-specific symptoms using diagnostic exclusionary criteria—that is, when it’s difficult to say exactly what counts as having the disease (and what counts as being successfully treated). Not knowing the etiology (the causal pathway) of a disease makes it difficult to develop drugs for the disease, all things being equal. This parallels some of the failures of developing treatments for Alzheimer’s: it’s <a href="https://www.statnews.com/2019/06/25/alzheimers-cabal-thwarted-progress-toward-cure/">not clear</a> what the <a href="https://www.nature.com/articles/d41586-018-05719-4">molecular basis</a> of the disease is (i.e., what causes Alzheimer’s) or whether it’s truly a single “disease” or a <a href="https://www.nature.com/articles/s41598-018-21641-1">collection</a> of diseases with potentially different treatments. For long COVID, the lack of a known mechanism (though scientists are starting to learn more) is also linked to unfortunately widespread skepticism and under-reporting, which is likely to reduce incentives for developers. Diffuse, hard-to quantify symptoms have long had trouble winning developer attention, as individuals who suffer from endometriosis, for instance, have known for <a href="https://www.nytimes.com/2021/04/27/health/endometriosis-griffith-uterus.html">far too long</a>.</p><p>Second, and relatedly, because long COVID is not a well defined condition, reimbursement is more challenging. Reimbursement can function as both a <a href="https://jolt.law.harvard.edu/assets/articlePDFs/v30/30HarvJLTech153.pdf">private</a> and a <a href="https://www-cdn.law.stanford.edu/wp-content/uploads/2019/10/NYULAWREVIEW-95-1-LemleyOuelletteSachs.pdf">public</a> source of incentives for development, whether deliberately or not. If a condition is poorly defined and not readily reimbursable, that decreases the incentives to develop treatments for it in the first place.</p><p>Third, clinical trials on possible treatments are likely to be both expensive and long. Trials are likely to be expensive because they would need to be large when the endpoint is relief from non-specific symptoms. Controls may also be difficult to recruit, since so many people have been infected by COVID by now. This is especially true because of the length of trials likely needed; if long COVID is defined by having several months of symptoms, for how long must symptoms remit to achieve an endpoint? Long trials unfortunately tend to <a href="https://www.aeaweb.org/articles?id=10.1257/aer.20131176">discourage</a> therapeutic innovation. </p><p>Fourth and finally, there is some evidence that <a href="https://www.bmj.com/content/bmj/370/bmj.m3026.full.pdf?fbclid=IwAR1IxIOdEzH7Evn6xR_ywpPU-FFqdO3Sc7VMOueHIuMM0hFlqE2WYvb9bPI%20-%20pdf&casa_token=6F4Jh8JODs8AAAAA:KhSuAmiz4pAWIMSWtG3oASQvFhH2YoAg4RtFavAWNFx0tyJp73sq2y_hGmQubx0gphkxHIcCVhSX">non-excludable treatments</a> work to help treat long COVID, including exercise, occupational therapy, and cognitive therapy. R&D on these treatments is likely to be <a href="https://writtendescription.blogspot.com/2020/05/nonexcludable-innovations-and-covid-19.html">underincentivized</a> by existing innovation institutions. And to the extent these are successful and become the standard treatment, they’ll compete with excludable therapies—and accordingly diminish the incentives to develop them in the first place.</p><p><b>What can policymakers do to support innovation related to long COVID?</b></p><p>A first item on which policymakers have already made progress in supporting innovation related to long COVID is to expand access to insurance and care for those experiencing its symptoms. As we have <a href="https://writtendescription.blogspot.com/2020/07/how-should-policymakers-use-pull.html">written previously</a>, ensuring that patients have access to health insurance (which provides reimbursement for treatments and services) can serve itself as an innovation incentive for pharmaceutical companies. The 2010 passage of the Affordable Care Act and its guarantee that insurers cannot discriminate against patients with <a href="https://www.hhs.gov/healthcare/about-the-aca/pre-existing-conditions/index.html">pre-existing conditions</a> (such as having previously had COVID-19) are a key step in this direction. HHS’s more recent <a href="https://www.hhs.gov/civil-rights/for-providers/civil-rights-covid19/guidance-long-covid-disability/index.html">guidance</a> that long COVID can qualify as a disability for purposes of anti-discrimination laws is also helpful. </p><p>But more could be done on this front. One step that could be taken is for the Social Security Administration <a href="https://news.bloomberglaw.com/health-law-and-business/long-covids-catch-22-too-sick-to-work-yet-not-quite-disabled">to add</a> long COVID to its list of qualifying conditions, which would assist patients in becoming eligible for <a href="https://www.macpac.gov/subtopic/people-with-disabilities/">Medicaid</a> or <a href="https://www.ssa.gov/disabilityresearch/wi/medicare.htm#:~:text=Everyone%20eligible%20for%20Social%20Security,waiting%20period%20for%20Medicare%20coverage.">Medicare</a> benefits. </p><p>A second item is for policymakers to invest in research enabling scientists to learn more about the long-term effects of COVID-19. In December 2020, Congress provided $1.15 billion to study long COVID, and in February 2021 the NIH <a href="https://www.nih.gov/about-nih/who-we-are/nih-director/statements/nih-launches-new-initiative-study-long-covid">launched</a> an initiative to use this funding. This support was extended by the <a href="https://www.nih.gov/news-events/news-releases/nih-builds-large-nationwide-study-population-tens-thousands-support-research-long-term-effects-covid-19">American Rescue Plan</a>, and in fall 2021 NIH awarded nearly $470 million to study these issues. This research could provide physicians with novel ideas for treatment in the short-term, and pharmaceutical companies with potential drug targets in the more medium-term. But it will be important to ensure that these research efforts are accessible to patients broadly, not only those who may have the connections and resources to travel to large academic medical centers. </p><p>Third, policymakers could consider additional ways to support the development of treatments for long COVID. Existing market-based reward incentives may be sufficient to encourage the development of novel prescription drugs or medical devices, but as noted above, they may be less effective at encouraging the development of information about the efficacy of non-excludable interventions like exercise. Trials on non-pharmaceutical interventions for long COVID might be directly supported by public funding, given the lack of private incentives to do so. </p><p>Fourth and finally, policymakers could support <a href="https://www.ncbi.nlm.nih.gov/pmc/articles/PMC8277229/">ongoing</a> efforts to repurpose existing drugs that might be effective in treating long COVID. For similar reasons as above, pharmaceutical companies may have limited incentives to test their old drugs for new conditions. But, just as some existing medications have been <a href="https://www.nejm.org/doi/full/10.1056/nejmoa2021436">effective</a> in treating COVID-19, the same may be true for long COVID. Direct funding of trials or <a href="https://writtendescription.blogspot.com/2020/08/are-covid-19-vaccine-advance-purchases.html">advance purchase commitments</a> may be useful in this area. </p><p><i>This post is part of a <a href="https://writtendescription.blogspot.com/p/covid-19.html">series on COVID-19 innovation law and policy</a>. Author order is rotated with each post.</i></p>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-15940856478655591212022-02-09T11:43:00.001-05:002022-02-09T11:43:15.604-05:00Motorola v. Hytera: Why Might Government Bring a Criminal Trade Secrets Case After a Successful Civil One? <p>A federal indictment was unsealed yesterday in the Northern District of Illinois, charging Hytera, a Chinese maker of radio transceivers and radio systems, with conspiracy to commit theft of trade secrets under the Economic Espionage Act. The <a href="https://www.justice.gov/opa/press-release/file/1469761/download">indictment</a> alleges that Hytera conspired with former employees of Motorola, who were working for Motorola Malaysia at the time, to steal digital mobile radio (DMR) technology developed by Motorola. The indictment brings criminal trade secrets claims under various provisions of 18 U.S.C. § 1832, including Sections 1832(a)(2) (copies, communicates, downloads, etc.), (a)(3) (possession), 1832(a)(4) (attempt), and 1832(a)(5) (conspiracy).</p><p>It is not necessarily uncommon for the government to bring a criminal case after a civil case. Recall in the <i>Waymo v. Uber</i> case, the judge in the civil case actually <a href=" http://ia801603.us.archive.org/15/items/gov.uscourts.cand.308136/gov.uscourts.cand.308136.428.0.pdf">referred the case to the US Attorney</a> for investigation, and he did so very early in the case, a long time before the actual trial. Sometimes the civil plaintiff can even lose or settle the civil case, and the government still brings the criminal case anyway. That happened to Anthony Levandowski in the Uber/Wayo dispute. He was <a href=" https://writtendescription.blogspot.com/2019/09/anthony-levandowski-is-being-jerk-crime.html ">indicted</a> and <a href="https://techcrunch.com/2020/08/04/anthony-levandowski-sentenced-to-18-months-in-prison-as-new-4b-lawsuit-against-uber-is-filed/?guccounter=1&guce_referrer=aHR0cHM6Ly93d3cuZ29vZ2xlLmNvbS8&guce_referrer_sig=AQAAALSGggESbzv692oqhbYrhiA4JEB3JpcjeN3OWgeWYIxdgprXebDbg4ASec8rMwxjwgnPNU_H_usuCO5M_1ZJf1dyD9aQkcJp_SM0h4FQGvNCEQA7wvgpoBDsclxOTJ8J_mSqow9H_5jMumV2w8qLC3OsyHw0zMqT2mQuEks2xgGC">convicted</a>, even after the companies settled the civil case. (Trump <a href="https://www.cnbc.com/2021/01/20/anthony-levandowski-pardoned-after-stealing-trade-secrets-from-google.html">pardoned</a> him).</p><div><div>But here, Motorola had a very big win in the civil case. The Illinois district court case (Judge Norgle presiding) was decided after a full jury trial. Motorola won a massive verdict of over $700M in damages, more than half of which were punitive. Se<i>e</i> <i>Motorola Sols., Inc. v. Hytera Commc'ns Corp.</i>, 495 F. Supp. 3d 687, 695 (N.D. Ill. 2020). (This was thereafter <a href="https://urgentcomm.com/2021/01/12/federal-judge-reduces-hytera-legal-payment-to-motorola-solutions-by-220-9-million/">reduced</a> by ~ $200M).</div><div><br /></div><div>One might think: "isn't that enough?" Why should the government bother to pursue a criminal claim now? I will not dwell here on the obvious political motive: "We think China is stealing US trade secrets and we need to make an example of them..." even if that is probably there. I'll put that hot potato aside and instead highlight several practical reasons why the government might be getting involved after the victorious civil case.</div><span><a name='more'></a></span><div><br /></div><div>First, as trade secret cases go, this was a pretty egregious one that seems to rise to the level of criminal intent. <i>See</i> 18 USC § 1832 ("...intent to convert a trade secret... intending or knowing that the offense will injure [the trade secret owner]....steals...copies...<wbr></wbr>possesses..." etc). This was an all out<i> </i>reverse-<wbr></wbr>engineering attempt that, in the end, was illegal, according to a civil jury. And there was a lot of evidence that this was exactly what Hytera was trying to do: copy US trade secrets abroad and re-sell products in the U.S. at a profit. It is likely to seem really unfair to a lot of people that you can just copy a product abroad, using U.S based data and know-how, and then take advantage of the US market. That should arguably trigger federal liability on both the civil and the criminal side, if anything should. </div><div><br /></div><div>Second, obviously, the remedies for a criminal claim are distinct and serious. They can include among other things, <u>prison</u>, hefty fines, including avoided costs, and often forfeiture of ill gotten profits. 18 U.S.C. § 1832 ("Any organization that commits any offense described in subsection (a) shall be fined not more than the greater of $5,000,000 or 3 times the value of the stolen trade secret to the organization, including expenses for research and design and other costs of reproducing the trade secret that the organization has thereby avoided."); 18 U.S. Code § 1834 ("Forfeiture, destruction, and restitution relating to this chapter shall be subject to section <a data-saferedirecturl="https://www.google.com/url?q=https://www.law.cornell.edu/uscode/text/18/2323&source=gmail&ust=1644509487089000&usg=AOvVaw1ref4Ab9eJgPTX3I6fqhDe" href="https://www.law.cornell.edu/uscode/text/18/2323" style="color: #1155cc;" target="_blank">2323</a>, to the extent provided in that section, in addition to any other similar remedies provided by law.")</div></div><div><br /></div><div>Third, the statute of limitations for this type of federal crime is longer, five versus three years, so the government can take into account acts going farther back in time. <i>See</i> 18 U.S.C. § 3282 (providing a 5–year statute of limitations). Note that in the civil case, Motorola successfully argued the discovery rule/fraudulent concealment doctrine to toll the SOL. Specifically, the jury found Hytera had concealed the theft making it hard for Motorola to discover within the usual 3 years. Motorola Sols., Inc. v. Hytera Commc'ns Corp., 495 F. Supp. 3d 687, 700 (N.D. Ill. 2020)</div><div><br /></div><div>Fourth, if there were weaknesses in the civil claim, the criminal claim can sometimes get around them. The reason is that <u>attempt</u> and <u>conspiracy</u> are available under 18 U.S.C. § 1832, which means even if there is in fact no trade secret, the government can still win by proving the requisite intent to convert and intent to injure were there. The conspiracy claim can also potentially allow the government to reach more defendants. Note, however, that as noted above the intent requirements in the criminal case are higher. </div><div><br /></div><div>Fifth, no matter how high the damages are, actually enforcing a U.S. court's judgment can be very difficult where a defendant like Hytera when its assets are located abroad. Judgments from a US court can easily be enforced in other US states, but when it can be really <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2196560 ">difficult to enforce</a> a US court's judgment against a foreign company that keeps its assets abroad. </div><div><br /></div><div>Sixth, closely related, the <a href="https://writtendescription.blogspot.com/2018/01/extraterritorial-reach-of-defend-trade.html">overarching question of extraterritoriality i</a>s a very significant issue in a case like this, and by that I mean both the question of getting personal jurisdiction over a foreign defendant, and the bigger question of <i>does US law even apply?</i> Most of the acts by Hytera --hiring away Motorola employees; downloading documents from Motorola servers; using that information to make nearly identical DMRs -- occurred abroad. The employees were based at Motorola Malaysia. The civil federal statutes (DTSA) and the criminal federal statute (the EEA) share an extraterritoriality provision, 18 U.S.C §1837, which permits application against foreign entities when there was "an act in furtherance" in the US. But (<a href="file:///Users/camillahrdy/Downloads/SSRN-id2196560.pdf">as Rochelle Dreyfuss and Linda Silberman have discussed</a>) there are reasons to be wary of stretching extraterritoriality in a civil case versus a criminal case. In the civil case, Motorola convinced the judge that there were US-based acts sufficient to trigger extraterritorial reach. Those acts were: acquiring information held on US servers and using that information to sell products embodying that information into the US market. My read is that the court based the "act in furtherance" on the <i>latter </i>(sale of products into US market), which was the only part that happened within the DTSA's effective date. <i>See</i> Motorola Sols., Inc. v. Hytera Commc'ns Corp., 436 F. Supp. 3d 1150, 1165 (N.D. Ill. 2020). This case <a href=" https://www.crowelltradesecretstrends.com/2020/03/after-motorola-verdict-dtsa-has-extraterritorial-application/ ">set a very important precedent on that point</a> by holding that the "act <u>i<i>n furtherance</i>"</u> of trade secret misappropriation that is needed to trigger extraterritorial application, could occur "ex post" at the point of use/disclosure in the form of sale of the products embodying the secrets To the extent this was a stretch of the extraterritorial reach of U.S. civil law to reach a foreign entity whose main "bad acts" occurred abroad, perhaps a criminal case, where extraterritoriality is more traditionally accepted, adds a bit more heft. That is just a hypothesis.</div><div><br style="background-color: white; color: #222222; font-family: Arial, Helvetica, sans-serif; font-size: small;" /></div>Camilla Hrdyhttp://www.blogger.com/profile/12721860033221697174noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-66174840584347989212022-01-21T11:35:00.003-05:002022-01-21T11:35:37.268-05:00What are the challenges in developing information around mixing-and-matching COVID-19 vaccines and therapies?<p><b>By <a href="https://law.wustl.edu/faculty-staff-directory/profile/rachel-sachs/">Rachel Sachs</a>, <a href="https://law.illinois.edu/faculty-research/faculty-profiles/jacob-s-sherkow/">Jacob S. Sherkow</a>, <a href="https://law.stanford.edu/directory/lisa-larrimore-ouellette/">Lisa Larrimore Ouellette</a>, and <a href="https://www.law.umich.edu/FacultyBio/Pages/FacultyBio.aspx?FacID=wnp">Nicholson Price</a></b></p><p>The FDA has now authorized three vaccines and several treatments (including both monoclonal antibodies and small-molecule drugs) for the prevention and treatment of COVID-19. But the initial evidence supporting these products’ introduction into the market did not include information about how they might work together. Nevertheless, information about mixing-and-matching COVID-19 vaccines and therapies would be highly valuable not only to physicians and their patients, who must already make decisions about what treatment options to pursue under conditions of uncertainty (if the treatments are <a href="https://www.nytimes.com/2022/01/06/business/covid-paxlovid-antibodies-omicron.html">available</a>), but also for policymakers, who want to know what products to prioritize for investment. Why is it so difficult to obtain this information? How can policymakers encourage its development? <span></span></p><a name='more'></a><p></p><p><b>What, if anything, is known about mixing-and-matching COVID-19 vaccines and therapies?</b></p><p>A growing body of evidence suggests that mixing and matching different COVID-19 vaccines is safe and generates an effective immune response, but evidence is more uncertain on whether switching vaccines mid-course leads to a <i>more</i> or <i>less</i> effective response, particularly when the initial dose was of an mRNA vaccine. This information seems especially important given that global vaccine distribution remains patchwork and viral variants continue to arise. What evidence is there for vaccines’ and boosters’ interchangeability? </p><p>The <a href="https://www.cdc.gov/vaccines/covid-19/clinical-considerations/covid-19-vaccines-us.html">CDC currently advises</a> that vaccines are <i>not</i> interchangeable for the initial two doses of the Pfizer-BioNTech and Moderna mRNA vaccines, but that mix-and-match dosing (more formally known as “heterologous” dosing) is allowed for booster shots. People who received non-FDA-authorized vaccines can also receive a heterologous primary dose and booster. The agency cites <a href="https://www.cdc.gov/vaccines/acip/meetings/downloads/slides-2021-10-20-21/04-COVID-Atmar-508.pdf">preliminary</a> <a href="https://www.ncbi.nlm.nih.gov/pmc/articles/PMC8528081/">results</a> from a pre-Omicron study by the NIH-funded Mix and Match Team, which found that heterologous boosters resulted in similar or higher antibody responses in the first month after boosting. But short-term antibody responses may not indicate clinical outcomes, and the study authors caution that the study was <i>not</i> designed to compare different booster regimes (given the sample size and lack of controls for relevant variables). Last week, the Mix and Match Team posted very preliminary <a href="https://www.medrxiv.org/content/10.1101/2022.01.13.22268861v1">results</a> that most booster combinations (heterologous or homologous) increase antibody response to the Omicron variant, but these results have similar limitations.</p><p>The European equivalents of the FDA and CDC—the European Medicines Agency (EMA) and the European Centre for Disease Prevention and Control (ECDC)—issued <a href="https://www.ema.europa.eu/en/news/ema-ecdc-recommendations-heterologous-vaccination-courses-against-covid-19-mix-match-approach-can-be">updated guidance</a> on heterologous vaccination in December, concluding that the mix-and-match approach may be used not just for boosters, but also for initial courses. This guidance was supported by a <a href="https://www.ema.europa.eu/en/documents/report/heterologous-primary-booster-covid-19-vaccination-evidence-based-regulatory-considerations_en.pdf">literature review</a> of studies available by December 3, including both immunogenicity studies like those from the Mix and Match Team and longer-term studies of vaccine effectiveness. Most of these studies involve the AstraZeneca vaccine that has not yet been authorized in the United States, and while a few describe the benefits of boosting J&J recipients with mRNA vaccines (like the <a href="https://www.thelancet.com/journals/lancet/article/PIIS0140-6736(21)02717-3/fulltext">COV-BOOST</a> and <a href="https://www.medrxiv.org/content/10.1101/2021.10.18.21264979v1">SWITCH</a> trials), the EMA emphasizes that there is “limited data on interchangeability of mRNA vaccines.”</p><p>The WHO’s <a href="https://www.who.int/publications/i/item/WHO-2019-nCoV-vaccines-SAGE-recommendation-heterologous-schedules">recommendations</a>, also published in December along with a literature review, state that although homologous dosing is “considered standard practice,” the WHO “supports a flexible approach to homologous and heterologous vaccination schedules” and says countries may consider administering mRNA vaccines or vectored vaccines (like J&J or AstraZeneca) after any other vaccines, but it doesn’t recommend switching to inactivated vaccines (like Sinovac-CoronoVac) after initial dosing with other vaccines. Recommendations for the global context may be more lenient toward mix-and-match dosing in part because of the <a href="https://www.nytimes.com/interactive/2021/world/covid-vaccinations-tracker.html">inequitable</a> global vaccine rollout. As the WHO notes, “[a] common reason for considering heterologous COVID-19 vaccine schedules is lack of availability of the same vaccine product in settings with limited or unpredictable supply.”</p><p>As incomplete as the evidence base is for heterologous vaccines, there is even <i>less</i> information like this about combining different COVID-19 therapies like <a href="https://writtendescription.blogspot.com/2021/01/why-arent-therapeutic-antibodies-being.html">monoclonal antibodies</a> and the antivirals <a href="https://writtendescription.blogspot.com/2021/11/molnupiravir-may-become-first-covid-19.html">molnupiravir and Paxlovid</a>. The information we want is in part comparative effectiveness (which therapy is best?) and in part combinatory (is it better to have two therapies rather than one?), which would be valuable for patients, providers, and healthcare payers. But as discussed in the following section, firms have limited incentives to develop this kind of information about their products. </p><p><b>Why is it difficult to obtain information about the comparative benefits of different health care technologies?</b></p><p>Despite the benefits of comparative and combinatory information for health care technologies, data is hard to come by. Companies generally don’t have good incentives to generate such information. Two <a href="https://www.statnews.com/2021/11/15/8-lingering-questions-about-the-new-covid-pills-from-merck-and-pfizer/">“lingering questions”</a> concerning the antivirals molnupiravir and Paxlovid, for example, are whether they work better in combination and how they compare with monoclonal antibodies. In an assessment of <a href="https://www.statnews.com/2021/11/15/8-lingering-questions-about-the-new-covid-pills-from-merck-and-pfizer/">these questions in <i>STAT News</i></a>, Dr. Céline Gounder at NYU’s Grossman School of Medicine bluntly noted that “neither Merck nor Pfizer is incentivized to run a combination therapy trial.”</p><p>To the contrary, such trials are prone to yield “negative information,” i.e., information that’s <i>harmful</i> to the market prospects of either drug. In a 2013 <a href="https://www.yalelawjournal.org/pdf/1165_phophm7k.pdf">article in the <i>Yale Law Journal</i></a>, Professors Amy Kapczynski and Talha Syed presented the case study of Norvasc for cardiovascular disease and older, similar cardiovascular drugs. At the time of approval, Norvasc’s manufacturer (Pfizer) failed to conduct any study of its drug compared to the standard treatment at the time—a study which, when conducted thirteen years later by NIH, <a href="http://columbiamedicine.org/education/r/Cardiology/Outpatient-Prevention/HTN%20and%20Hyperlipidemia/ALLHAT.pdf">demonstrated</a> Pfizer’s product was not clinically superior—and in some respects, was <i>inferior</i>. This, Professors Kapczynski and Syed argue, is an example of how the downside to developers in producing such comparative data far outweighs any potential upside. Professors Kapczynski and Syed further categorize this negative information into two groups: information that the studied drug is not as safe and efficacious as previously demonstrated (like <a href="https://www.sciencedirect.com/science/article/pii/S0140673604175235?casa_token=wCdQy4SvA64AAAAA:HReCJRKrnpvyuvAGaUNZFUl6-ZGTWR3RqSszvAOxfD_avGHk_Axfr3PGbIep_trVgUs1G1eqMeRH">Vioxx</a>); and information that the studied drug is <i>comparatively</i> less safe or efficacious than its competitors. In either case, the only entity currently incentivized to produce such information seems to be an independent third-party—like NIH, the sponsor for the COVID vaccine Mix and Match trials.</p><p>Incentives aside, there are practical barriers to conducting comparative trials as well. Developers may have a hard time negotiating with a competitor to obtain enough of their drug to do a comparative analysis. If the competitor’s drug is already approved or authorized, it can typically be obtained from the market. But garnering enough—at reasonable prices—is often difficult for even the simplest analyses, and <a href="https://scholarship.law.cornell.edu/clr/vol103/iss1/1/">a point of antitrust scrutiny</a>. Further, the mere asking for excess product for a clinical trial is likely a signal of the developer’s confidence in its product’s superiority—further discouraging sharing. And, for comparative trials at least, differing dosing regimens may complicate any analysis. For the COVID-19 mRNA vaccines, for example, how should researchers compare mixing and matching second shots when Pfizer’s original data spaced doses three weeks apart to Moderna’s four?</p><p>There are practical barriers to combinatory trials, too. Combinatory trials generally require more treatment arms, which require more participants to be robustly statistically powered—and thus more time, and more money. This is likely exacerbated by the need for participants who fulfill each arm’s criteria. Fielding enough participants to demonstrate the combinatory efficacy of mixing-and-matching two-dose COVID-19 vaccines, for example, requires a subset of participants who have received one dose but not the second. As the number of permutations of combinations increase, there may simply not be enough participants out there to enroll—and especially to include participants from traditionally underrepresented communities. And, for observational studies as opposed to controlled trials, combinatory information relies on both products being approved for heterologous use, available, and covered by patients’ insurance—none of which are a guarantee.</p><p>Lastly, the desire for comparative and combinatory data is ultimately about updating information against constraints of financial resources, patients, and time. The pandemic continues to evolve as new viral variants and new therapies come online; running comparative trials each time a new therapy is authorized <a href="https://writtendescription.blogspot.com/2021/03/how-are-covid-19-vaccine-developers-and.html">or a new variant comes to the fore</a> is impractical and, of course, costly. Even with good incentives for developers, there may simply not be enough money or patients to go around—or enough time to conduct a study before new variants continue their <a href="https://worldhealthorganization.cmail20.com/t/d-l-qddddty-juzkluuuu-y/">march down the Greek alphabet</a>.</p><p><b>What tools can policymakers use to encourage the development of this information?</b></p><p>Despite these difficulties, policymakers have multiple tools to help develop this sort of combinatorial information, including incentivizing or mandating drug companies to come up with the information, directly generating the information, or facilitating its collection in some other way.</p><p>One possibility is using agency incentives to encourage drug companies to develop the information. Authorization or approval of a therapy or reimbursement for its use by federal payers like CMS could be contingent on evidence of not just effectiveness versus a placebo, but also effectiveness versus the current standard of care. If one product is developed later than another, the second product’s developer could be required to include a comparison arm or a mix-and-match arm in the clinical trial. In the Paxlovid <a href="https://www.fda.gov/news-events/press-announcements/coronavirus-covid-19-update-fda-authorizes-first-oral-antiviral-treatment-covid-19">trials</a>, for instance, the treatment arm was compared to placebo, and no patients had received monoclonal antibody treatment. To develop comparative information, the FDA could have considered requiring Pfizer to include a comparator arm for mAb therapy or one where patients got both to see what the added benefit would have been (assuming medical feasibility). This approach is, of course, more complicated where both products are being developed simultaneously, as with the mRNA vaccines. In the simultaneous development context, requirements or guidelines for more standardized clinical trials could help make the data at least <i>more</i> directly comparative, though, as we have <a href="https://writtendescription.blogspot.com/2021/06/why-do-differences-in-clinical-trial.html">discussed</a>, such standardization efforts bring their own complications.</p><p>A more direct and thus far substantially more important pathway is direct government funding. The government can either run the relevant trials directly or provide <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3174769">grant</a> funding for others (for instance, academics) to run the trials themselves. This results in higher on-book government expenses, of course, but can enable the government to design a relatively neutral trial rather than one designed to favor one product over another. It also allows the enrollment of multiple manufacturers, and the possibility to conduct adaptive trials that examine the relevant questions in a more efficient way, as the <a href="https://writtendescription.blogspot.com/2021/05/what-can-policymakers-learn-from-uks.html">RECOVERY</a> trial has done in the UK.</p><p>Policymakers can also act to facilitate the development of such information from both private-sector and public-sector clinical trials. As noted above, those wishing to run comparative or mix-and-match trials may face problems acquiring enough of the relevant products to run their trials; policy mandates could require as a condition of authorization or approval that drug companies make sufficient amounts of their products available for later trials (the <a href="https://www.fda.gov/drugs/guidance-compliance-regulatory-information/access-product-samples-creates-act">CREATES Act</a>, enacted in December 2019, goes some way along this path). Policymakers could consider other facilitating actions, such as immunizing drugmakers for liability arising from side effects in clinical trials run by anyone other than the drugmaker. (In the COVID-19 context, for example, liability for injuries related to vaccines has been a <a href="https://www.fiercepharma.com/vaccines/side-effect-liability-a-potential-hurdle-for-eu-covid-19-vaccine-negotiations-reuters">persistent</a> <a href="https://www.statnews.com/2021/02/23/pfizer-plays-hardball-in-covid19-vaccine-negotiations-in-latin-america/">sticking point</a>, generally).</p><p>Finally, policymakers can facilitate the development of knowledge about comparative effectiveness and mix-and-match treatments <i>outside</i> the context of clinical trials. Health care providers are already treating patients under conditions of uncertainty, sometimes mixing-and-matching vaccines, combining treatments, and otherwise acting outside the scope of clinical trials (including <a href="https://writtendescription.blogspot.com/2021/12/how-does-pregnancy-factor-into-covid-19.html">treating pregnant people</a> even though they are often excluded from trials). Policymakers should encourage the collection of high-quality data about these ongoing practices so that this real-world evidence can be used to increase knowledge of what works, how, and when. This might mean the provision of <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2928997">infrastructure</a> for better data collection, pathways for this data to be <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3152570">considered</a> by <a href="https://jamanetwork.com/journals/jama/article-abstract/2697359?casa_token=u0pBpJdwi0UAAAAA:e8v7K_GvJxIRxmPd1bESgMo9AtUOR_Zc7JEFA9hlWLLLOZixBpPN9-Bqf-22kURMXmXfIgWRhfw">regulators</a> (already an area of significant and <a href="https://jamanetwork.com/journals/jama/article-abstract/2597296?casa_token=cEP0wcU0XEgAAAAA:z3MJ5q3eGQbK72KIYc_RnQEGwuPmIORCbDGp0-Oowaiu7niDy4pixHBScQDj8mnr52YLwvly23w">contestable</a> interest), or incentives for <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2766707">private actors</a> to share information. Clinical trials will remain the gold standard, but knowing something is far better than knowing nothing. Policymakers can move forward on all fronts to augment information about mixing and matching the COVID-19 vaccines and therapies we already have.</p><p><i>This post is part of a <a href="https://writtendescription.blogspot.com/p/covid-19.html">series on COVID-19 innovation law and policy</a>. Author order is rotated with each post.</i></p>Lisa Larrimore Ouellettehttp://www.blogger.com/profile/06766361418590445748noreply@blogger.com0tag:blogger.com,1999:blog-2977297931731346524.post-79931544402377570062022-01-12T10:36:00.003-05:002022-01-12T21:41:18.261-05:00Jessica Litman: Who Cares What Edward Rogers Thought About Trademark Law?<p>Professor Jessica Litman has a fascinating forthcoming book chapter on the history of the Lanham Act and the influence of Edward S. Rogers, "<a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3932701">Edward S. Rogers, the Lanham Act, and the Common Law</a>. " Litman tells the history of the drafting of the Lanham Act of 1946 through the lens of Edward S. Rogers, detailing how his advocacy and drafting work influenced the final statutory text. </p><p>Readers may be surprised to learn that Litman started research on the topic as a law student in the 1980s, while writing a student note on trade dress infringement. She went into the stacks of the Columbia Law Library and started reading bound copies of legislative history. She noticed it seemed like Rogers was everywhere, from 1932 all that way up to 1946, and that the chairs of the committees were deferring to him. That was really interesting, she thought. But after the note was done, she kind of forgot about it.</p><p>Now, forty years later, <a href="https://michigan.law.umich.edu/faculty-and-scholarship/our-faculty/jessica-litman">Litman</a> is a professor at the very institution Rogers attended, the University of Michigan. She was surprised to find no one seemed to remember Rogers had been at Michigan, even though he "earned three law degrees and was a member of the adjunct faculty for 18 years" (3). In this book chapter, Litman is making up for that, returning to the topic of Rogers and his legacy. She's found her notes from 1981. She's read everything he wrote, and all his cases, starting in 1895 all the way until his death in 1949.</p><p>The result is a remarkably personal history of Rogers' involvement in the development of trademark law, full of contemporary details and selected quotes from Rogers' own writings. Litman's chapter, which engages extensively with the secondary literature as well as the primary sources, adds a tremendous amount to this history and to the many excellent recent articles touching on this subject, including <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3541804">The Lost Unfair Competition Law</a> by Christine Haight Farley, <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3352720">The Erie/Sears/Compco Squeeze: Erie's Effects Upon Unfair Competition and Trade Secret Law</a> by Sharon Sandeen, <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3593074">In the Shadow of the Trade-Mark Cases: The 1881 Trademark Act and the Supreme Court</a> by Zvi Rosen, Mark McKenna's book chapter, <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2178432">Trademark Law's Faux Federalism</a>, and many others.</p><div>My interview with Litman is transcribed in this post. The interview significantly deepened my knowledge of the subject and I am excited to share it with readers.</div><span><a name='more'></a></span><div><br /></div><div>CAH: So who cares what Edward Rogers thought about trademark law? Why is this history of his views so important?</div><p>JL: One thing I got out of the project is I now know what all of the sections of the Lanham Act as originally enacted were intended to mean. Some stuff that was just incomprehensible to me, like <a href="https://www.law.cornell.edu/uscode/text/15/1115">Section 33(b)(6)</a>, I now know why that was there, and I now know why other things are <i>not</i> there, like the fact that there is no definition in the statute of likelihood of confusion; or how one comes to own a mark; or secondary meaning... That always seemed very peculiar to me. But knowing why that is not there helps me to understand what Congress thought the Act was doing, and indeed what Rogers thought it was doing, given that he wrote most of the language in the 1946 Act. </p><p>There were also many fun stories, trademark trivia stories, along the way. ... </p><p>CAH: So, in the decades leading up to the Lanham Act, trademark law was substantively common law. But there was a federal act, the 1905 Act. Why did Rogers think this was not good enough? What was the biggest problem with the 1905 Act?</p><p>JL: It wasn't Rogers, it was the Supreme Court. The Court had said "no substantive trademark law," that exceeded Congress' limited Commerce Clause powers. The 1905 Act was thus designed to just be an optional registry. But there were too many hoops to go through, and at the end you got nothing more than before you did it. And as our economy was getting more national, more international, and more complicated, it was really important to figure out if anyone was using the mark you were using. But there was no way to do that. Well, in fact, there was Henry Thompson... But besides him there was no central directory. And that was Rogers' problem. Rogers was happy with the common law. He just wanted there to be a reliable registry.</p><p>CAH: So sellers wanted to have a better idea of whether a mark they wanted to use was owned by someone else, but the 1905 Act's route to registering was needlessly complicated, not mandatory, and it didn't add any real incentive to entice trademark owners to register. So a lot of trademarks were not registered even though the option was available.</p><p>Would making registration mandatory have solved the problem for Rogers?</p><p>JL: His early drafts required registration, and if they didn't require it, they required it as a condition of using the mark in commerce, which is similar. But he could not get buy-in from the other trademark lawyers and the ABA. Henry Thompson in particular, who was just a lovely, crazy, flamboyant nut job, sent out these postcards and whipped up fear, and basically said "look people will come in and register marks they don't own and keep you from using the marks you've ben using forever." So Rogers had to drop mandatory registration. And he came up with <a href="https://www.law.cornell.edu/uscode/text/15/1065">incontestability</a> as a "bribe" to get people to register.</p><p>CAH: I like how you bring to light that Thompson, who had this private business based on providing a catalogue of trademarks, started this movement against a federal registry; but it was really just self-interested because that would make his business obsolete. So then Rogers comes up with incontestability. And that's kind of a weird thing. It's an odd way to entice people to register...</p><p>JL: Well, we borrowed incontestability from England, where it works. But the difference is in England trademarks are mainly registration-based rights, so it basically acts just like a statute of limitations. If your mark is on the register for five years, it can't be taken off the registry for any of these grounds. But what is weird about America, is we say you get your rights ultimately through using the mark in commerce, not from registration, but once it's registered, you can get this certificate of incontestability. (Rogers must have done that to give me exam questions to ask every year, because incontestability just asks to be the basis for an exam question.)</p><p>CAH: So incontestability works better in a pure registration system.</p><p>JL: If it's basically a "quiet title," you might think that is a bad idea, but it at least make sense. In a use based system, incontestability doesn't work well as an incentive to register. It's incoherent. Your rights can't be cancelled, you get a "quite title," except that's subject to all the potential defects in your title. </p><p>CAH: Because your rights are still ultimately defined through use and the rights you've actually established through your use, so a quiet title for your registration is somewhat meaningless.</p><p>JL: Well, it's really good if your mark is not distinctive. It works for descriptive marks. Like for<i> <a href="https://scholar.google.com/scholar_case?case=16323007241887299048&q=park+n+fly&hl=en&as_sdt=2006">Park'N' Fly</a>, </i>but not for inherently distinctive marks. For those you don't need it. And I think if you have an un-distinctive mark without secondary meaning you shouldn't get it.</p><p>CAH: Do you think the Henry Thompson contingent was a big reason registration was not made mandatory? </p><p>JL: I don't think so. His main contingent was in Boston, so his basic influence was in Boston, he controlled the Boston Patent Law Association. And that was enough friction to slow the bill down, but in fact it passed the House and Senate quite a few times while he was opposing it. So I think it was less that than that the trademark bar really liked the common law, and was very nervous of anything that was going to undermine it. </p><p>CAH: And what exactly did they like so much about the common law? Just that it was stronger?</p><p>JL: As Edward Rogers became the sort of "trademark lawyer to big pharma," he became less and less concerned about the rights of small trademark owners who Coca Cola or Quaker Oats was going to roll over, and more interested in making trademark rights as robust as possible. </p><p>But lots of other members of the bar were invested in the common law in part because it was quite balanced in many ways. It was different from the doctrine we know. I mean if you sit down, as I did forty years ago, with the Trademark Reporter, and you start with Issue 1, and you read all the cases in chronological order, one of the things you discover is courts gave really robust remedies to unfair competition that wasn't trademark infringement, that if you copied a functional feature, you could nonetheless get equitable relief because courts thought of their equity power as incorporating the right and the obligation to punish people who were bad actors. So lots of stuff was protected that we would absolutely not not protect today.</p><p>CAH: So I guess that still doesn't fully explain why you can't have mandatory federal registry. You say, great, we love the common law, all we're asking is mandatory federal registration? You can keep all those common law rights, but we just make registration mandatory.</p><p>JL: Ok, so you make everybody register a mark. Along comes Fred. He's been using a mark in commerce for thirty years, and he hasn't registered his mark. Saying to Fred, "you don't have any rights anymore, they're gone," is a problem. The second problem is constitutional. You can't make Fred register his mark until he steps out of the state of Ohio. So long as he is only within the borders of a single state, he's earning common law trademark rights, but he's not in interstate commerce. And Congress doesn't have jurisdiction to make something mandatory if it is strictly intrastate. So taking Fred's rights away because he didn't register, because we can't make him register, just struck people as really troubling. </p><p>And, you know, maybe Rogers would have pushed for it harder if he hadn't left in 1941 to run the Sterling Drug Company. But once he took over as chairman of the board of Sterling he just, to all accounts, didn't really communicate with Congress or participate at all in the bill until after it was passed. </p><p>CAH: So it links to that larger point about use. There's obviously this constitutional problem, but there's also this sort of obsession in the U.S. with use creates rights.</p><p>JL: Right.</p><p>CAH: So the other guy to talk about I guess is Frank Schechter. My students really just learn about him in the context of dilution and and his writings about the need for a dilution cause of action. But is it fair to say Schechter was the foil to Rogers' limited view of Congress' power? Did they have an interchange? Did they disagree? Because Schechter would have wanted those strong substantive federal rights...</p><p>JL: He would indeed. While I think Schechter's relationship with Rogers was certainly cordial, they served together in local trademark associations, and they cited each other's work infrequently but respectfully, I think we don't appreciate just how big the gulf was in the 1930s between Jewish lawyers and Gentile lawyers. Rogers did not have a Jewish lawyer in either of his law firms until the late 1930s; and so far as I can tell there was only the one. The Jewish lawyer, Jerome Issacs, practiced with the firm from the late-1930s to the mid-1940s. He joined the firm after Lenore Stoughton, who had once been Edward Rogers’s legal secretary, was promoted to lawyer by Rogers’s partner, James Hoge. So there were women before there were Jews. And Rogers was not really a heavy proponent of the rights of women lawyers either. </p><p>I think just socially, it was a very big gulf. The ABA, in particular, was committed to a system that was sort of bent on keeping Jews and immigrants from practicing law. I don't see evidence that Rogers was personally antisemitic, except in the sense that there weren't any Jews in his vicinity. But I think that he and Schechter didn't really interact because they were in completely different social circles. You know, Rogers was yachting, golf, Sons of the American Revolution, so he was "Protestant gentry" in some ways. </p><p>CAH: That's all really interesting, obviously. Ok, so they didn't have the closest relationship, but they were not rude to each other.</p><p>JL: No. They didn't dislike each other. Schechter had a lot of respect for Rogers.</p><p>CAH: So a question I had reading your paper is, if Schechter had lived (he died in <a href="https://www.nytimes.com/1937/09/27/archives/frank-schechter-lawyer-dies-at-47-trademark-law-authority-and.html">1937</a>), would there have been a different Lanham Act? Would it look more robust at the federal level? Would we have gotten a dilution cause of action earlier...? </p><p>JL: Only maybe, because of the other stuff that happened. Before Schechter died, Congress had really dropped everything in 1932 to enact economic legislation, and so there simply wasn't any trademark bill or trademark committee for five years. And so I don't know whether when the trademark subcommittee got back going, and Fritz Lanham picked it up, whether he personally would have turned to Schechter, or turned to Rogers. Lanham had actually been in all the hearings from 1924 on through to when they stopped in 1932, so presumably he had some views on who was right. This also was influenced by the Commissioner of Patents. So I just don't know what happens in the counter factual.</p><p>CAH: I didn't really get a sense of whether Schechter would have said "no more common law, it's all federal," right, he wouldn't necessarily have said that?</p><p>JL: Schechter wouldn't have necessarily said that. Everybody liked the common law. But unlike Rogers — who thought the common law was plenty robust in everything but false representation law and re-sale price maintenance, which were the two holes Rogers saw in the doctrine, and he couldn't get anyone to come aboard on re-sale price maintenance— I think Schechter thought that trademark rights should be more muscular and should be enforced with criminal as well as civil penalties. He was the lawyer for <a href="https://en.wikipedia.org/wiki/BVD">BVD</a> Underwear. I have no idea what problems BVD Underwear was having with trademark infringement. There aren't cases. But Schechter felt pretty strongly, probably as a theoretical matter, that trademarks should be treated as very valuable property. </p><p>CAH: So my understanding is that Rogers, Schechter, and all the guys you're talking about were mostly plaintiff-side trademark lawyers, and they're working for big corporations like Coca-Cola. </p><p>JL: They are by the mid-1930s. Rogers was also defense-side in the early twentieth century. </p><p>CAH: So they're really pro trademark rights from the perspective of big companies. I guess when you keep saying they liked the common law so much, I keep thinking of what I'm reading, from the trade secrets perspective, about the origins of unfair competition law. It was so expansive. The number of acts that were actionable...</p><p>JL: It's not quite that bad. You certainly get cases and you see courts enjoining stuff that we in the twenty-first century would say "how could that possibly be actionable?" But the hook is courts are really only doing this <i>if</i> they decide that defendants are bad actors. So in a sense, once they find the defendant is a bad actor, they are really expansive in what kind of injunctive relief they are going to give. That's a predicate. If it just seem like normal competition, they won't intervene. So in that sense, this really is very much like federal equity jurisprudence everywhere else in the first third of the twentieth century. Courts sitting in equity absolutely believed that part of their job was to find and punish the wrong doer, even if there may not be a body of statutory or even previously discerned common law that makes this illegal, it was just their sense of what courts could do.</p><p>CAH: It's really different from, and again coming from the trade secrets perspective, the strong "property-rights" view, where the focus is all on the definition of whether there is a right in the first place. But there is a worry about the sort-of roving judge operating under the common law, based on her discretionary power to look for the bad actor. That's I think the main point Mark Lemley made in his <a href="https://law.stanford.edu/publications/the-surprising-virtues-of-treating-trade-secrets-as-ip-rights/">article</a> arguing for treating trade secrets as intellectual property. It can be very problematic in the trade secrets space.</p><p> JL: I think it's problematic everywhere. It's awful in copyright. And I think it's bad in trademark, and it's very manipulable. Good lawyers can do all sorts of stuff with that. Of course, good lawyers like that system better. Because it's much easier to paint defendant as a bad actor than to look at the statute and say, you know, this is what the language says and that applies here...</p><p>CAH: Yeah, I'm thinking of defendants like Anthony Levandowski in the trade secret space, and even now Elizabeth Holmes in a different context. When the lawyers paint the defendant in a certain way, that almost wins the case.</p><p>So now I have to ask about <i>Erie's</i> role. The Supreme Court's 1938 <i><a href="https://scholar.google.com/scholar_case?case=4671607337309792720&q=erie+r+co+v+tompkins&hl=en&as_sdt=6,33">Erie</a></i> decision held common law now had to be state law. So this, ostensibly, eliminated the notion that there could be one uniform "federal common law" of trademarks—</p><div>JL: But it doesn't. I mean, it should. But it didn't. First, courts say, well <i>Erie</i> does not apply to equity. There is a <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2924107">completely respectable argument</a> that this is so, to the extent the Supreme Court in <i>Erie</i> was interpreting the <a href="https://www.law.cornell.edu/uscode/text/28/1652">Rules of Decision Act</a>, and the RDA was limited in its terms to actions at common law, then people for six or eight years after <i>Erie</i> took the position, quite defensibly, that <i>Erie</i> did not apply to federal courts' power in equity, it only applies to common law and obviously statutory law. Second, you get the innovation, which was I think spearheaded by a <a href="https://www.jstor.org/stable/1117160?casa_token=jrByguTiOyQAAAAA%3A6wxuF4kd5MvXU4_jMJBoC0IHCgMRZIWT821BSVnt9DjS-24aGUZTcu5Tb2bYPQEjN7kjKT-itIK51cAOAdsTEjiY03z3YU4svVVmNOA0nwSAqDmgs38&seq=1#metadata_info_tab_contents">1942 <i>Columbia Law Review</i> article</a>, that says, well, okay, if the trademark is unregistered, the law is state law per <i>Erie,</i> but if it's a <i>registered</i> trademark, the law is still federal. And so for the first time we separate out the two sources of law. </div><div><br /></div><div>But I think what we learn then is that, suddenly, state law gets amazingly robust, protecting all kinds of things that don't resemble traditional trademarks. Eventually the Supreme Court kills that off in <a href="https://scholar.google.com/scholar_case?case=4882017016049328871&q=sears+compco&hl=en&as_sdt=6,33" style="font-style: italic;">Sears</a>/<i><a href="https://scholar.google.com/scholar_case?case=3565343023157335003&q=sears+compco&hl=en&as_sdt=6,33">Compco</a>. </i>And then of course, lawyers find <a href="https://www.law.cornell.edu/uscode/text/15/1125">Section 43(a)</a>. </div><div><br /></div><div>There seems to be a strong sense of entitlement that unfair competition needs to be actionable, and we will find a plausible source for it so that we can keep bringing suits. So I've been as critical as anyone at the crazy expansiveness of court decisions under 43(a). And I thought that <i><a href="https://scholar.google.com/scholar_case?case=12034599115584297601&q=taco+cabana+two+pesos&hl=en&as_sdt=6,33">Two Pesos v. Taco Cabana</a></i> was just a decision the Supreme Court should have been embarrassed to issue. But I think the impulse is that if we really think that trademarks are created by use and these use-based rights should be actionable, we're going to find a way to get there.</div><div><br /></div><div>And what was weird for me doing this article was discovering, yeah, and that's what they expected to happen back in 1946. They expected the common law to continue to provide the substantive rules of infringement actions, and that's why they didn't put them in the statute. Because I, like everyone else, had assumed the Lanham Act was supposed to replace and codify trademark law, not supplement it. </div><p>CAH: So I know some have suggested <i>Erie</i> was really on peoples' minds in thinking about the need for a federal statute. Is that so? </p><p>JL: Oh sure, both <i>Erie</i> and the fact that state governments had started enacting state trademark statutes— and under <i>Erie</i> it seemed clear they could— but the state trademark statutes, which gave rights within the state based on registration in the state, just had the trademark bar going nuts.</p><p>CAH: So <i>Erie</i> and these state laws were on peoples' minds in thinking about the need for a federal law, and eventually we get that <i>Sears/Compco</i> preemption on the state side. I really like your point that even after <i>Erie, </i>in a post<i>-Erie </i>world,<i> </i>we really do in effect still have a federal common law of trademarks. It's statutory, sure, but it's just courts doing federal common law. The've got their circuit splits, but it looks a lot like a federal common law might have—</p><p>JL: It does, but interestingly, back before 1938, there <i>weren't</i> circuit splits. It was a remarkably uniform body of law. And folks said it was stable. So it's very unlike the world today.</p><p>CAH: And why was that? Was it because it was pre-<i>Erie,</i> and so there was this opportunity to seek a more uniform law?</p><p>JL: Because courts believed the common law derived from "natural law." So they looked up in the sky, and they used as evidence what other courts—any courts— had done. So you had a lot of citations to decisions from jurisdictions that we would think of today as "foreign," but back then, because it was all natural law, it was all "persuasive authority." </p><p>CAH: So it was in a sense more uniform. Sharon Sandeen, along with her <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3352720"><i>Sears</i>/<i>Compco </i>article</a>, makes a lot of these points with respect to the broader law of unfair competition; she calls it the "<a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3111477">myth of uniformity</a>", she essentially says the idea that federalization after <i>Erie</i> is going to make things more uniform is a farce.</p><p>JL: Well it certainly hasn't.</p><p>CAH: To me, one of the big themes of your paper is that Rogers didn't really get what he wanted. Rogers thought trademark law should remain common law, but that there should be a really useful, comprehensive registry of marks. But this did not happen. Instead, we get this mix. We don't eliminate common law, we have a federal cause of action for common law, we also have optional registration and some substantive federal rights that go with that, but it's not mandatory... </p><p>So what would Rogers think of the modern state of trademark law, if Rogers saw what we have today?</p><p>JL: He would be more happy today than he was in 1949, right before his death, when people were insisting that, no, the common law and unfair competition had not survived passage of the Lanham Act, and he was starting to suggest looking to <a href="https://www.law.cornell.edu/uscode/text/15/1126">44(h) and (i)</a> —</p><p>CAH: I really enjoyed <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3541804#:~:text=Christine%20Haight%20Farley,-American%20University%20%2D%20Washington&text=The%20accepted%20metaphor%20that%20trademark,the%20relationship%20between%20the%20two.&text=As%20a%20result%20of%20this,law%20remains%20an%20enigma%20today.">Christine Farley's article</a> on that attempt—</p><p>JL: I think he'd be pleased at the extent to which, today, the common doctrine has crept back in to all of the cases, and at the use of 43(a) as a vehicle to bring in the common law. And I think with incontestability, I guess he'd say, okay, that was an idea, maybe it doesn't work, but "gee it would be good if there were a registry of all trademarks..." </p><p>CAH: And now we have many thousands of Mr. Thompson's supplying us with paid trademark searches...</p><p>JL: Now we have Google. And I don't know when you graduated law school, but the major, dominant <a href="https://www.thomson-thomson.com/ttdomino_subdomain/www/saegisdocs-nsf/ttnotitlenonav/about_t_t_-_the_history_of_thomson___thomson_opendocument.html">Thompson & Thompson</a> trademark search service back in the 1980s was in fact the descendant of Henry Thompson's bureau. He left it to his sons, they eventually built it up and sold it. That was a fairly long-lived enterprise. It lasted a long time until we got digital networks and no longer need someone filing little index cards in a catalogue in a Boston office.</p><p>CAH: Today he'd have to develop a really great software. ... So is there anything else you want to mention about what you found here?</p><p>JL: Yes, I think it poses a philosophical question for those of us who are philosophically inclined. If I am right, and the drafters envisioned that robust common law protection for trademarks and non-trademarks would survive, and if many of us are right that <i>that</i> is where the problem is, then it's no longer tenable, if you believe me, to argue that this is not what Congress had in mind, that Congress did not intend this. We need to really come up with a next level of arguments for why this is a really bad thing.</p><p>CAH: Because it <i>is</i> what Congress had in mind.</p><p>JL: Yeah, it seems to have been. They weren't imagining the 21st century obviously. But yeah.</p><p>CAH: Okay, well, there are twenty thousand more questions I could ask you, on this and many other topics. But I truly appreciate your time.</p><p style="text-align: center;">*** </p><p>Litman's book chapter, "Edward S. Rogers, the Lanham Act, and the Common Law," is available on <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3932701">SSRN</a>. It will be published in the forthcoming volume, ROBERT G. BONE & LIONEL BENTLEY, RESEARCH HANDBOOK ON THE HISTORY OF TRADEMARK LAW.</p>Camilla Hrdyhttp://www.blogger.com/profile/12721860033221697174noreply@blogger.com0