USPTO Public Advisory Board Must Represent The Public
By Abby Rives, Engine IP Counsel
This op-ed was originally published on Law360 on October 5, 2022
Every startup knows you have to talk, and listen, to your users — and it's often the unhappy ones who can provide you with the best information.[1] So you don't just talk to one subset of your stakeholders, because you cannot be successful if you only know a fraction of the people you are working for. The government is, or should be, no different. For example, the U.S. Food and Drug Administration gets advice from drug companies and patients,[2] while the Internal Revenue Service's intentionally balanced advisory council includes, e.g., members who work with low-income taxpayers, Native American tribes and nonprofits.[3]
Soon the U.S. Patent and Trademark Office will pick three new voting members for its Patent Public Advisory Committee.[4] And this is a pivotal time for the agency to remember that its stakeholders include diverse swaths of entrepreneurs and the broader public, so it can appoint committee members that represent everyone.
The PPAC is similar to other pretty common committees across the federal government.[5] It provides advice to the USPTO director on the agency's operations, budget and fees;[6] reviews policies and goals;[7] and issues yearly recommendations on topics like patent review, legislation and international engagement.[8]
Knowing this, you might think it's a no-brainer that the PPAC would have members that speak for the general public — it's even in the name. But until recently, the PPAC did not include anyone representing the public's interest in the patent system — to my knowledge. Instead, the committee has historically been made up of patent attorneys and patent owners — or members from companies that own patents, often lots of them.
Patent owners and patent attorneys obviously have a lot of valuable expertise to contribute to PPAC, but they are far from the USPTO's only stakeholders. The patent system — and the USPTO — are supposed to serve the public first and foremost.[9]
And that public — including startups, small businesses and other individuals — encounters the patent system in various ways, beyond what patent owners and attorneys might see. These fresh sets of eyes could help steer the PPAC and USPTO.
For example, patent quality has been on the PPAC's agenda for at least a decade, and no one understands the importance of this issue better than innovators and small businesses who had invalid patents stand in their way. Studies estimate that nearly 30% of U.S. patents would be invalid if tested in court.[10] And these low-quality patents are, unfortunately, routinely used to threaten startups and small businesses with long, expensive — but ultimately meritless — litigation.[11] Companies that face these threats report substantial operational impacts,[12] and several startups have been forced out of business altogether.[13] The USPTO and PPAC are right to focus on this problem, and hearing directly from startups on the front lines would inform creative solutions and help the agency set priorities around patent quality.
The PPAC's review of budget and fees is another area where advocates beyond the usual suspects are primed to weigh in. Right now, there is misalignment between the USPTO's costs and the fees it collects — the biggest expense is examining applications, yet the examination fees the USPTO charges do not cover half those costs.[14] Instead, the agency relies on fees collected after examination, at issuance and during the life of a patent, to make up the difference. This risks budgetary shortfalls and creates incentives to grant — potentially low-quality or invalid — patents. One proposed solution is charging larger patent applicants higher fees, so they pay full freight and subsidize smaller applicants.[15] While this type of redesign might not sound great to patent insiders familiar with the status quo, these are ideas that get attention from patient advocates in patent reform and drug pricing conversations.[16]
Now, the PPAC is also turning its attention to equity and inclusion — almost by definition, the agency must listen to totally new groups here. It is no secret there are stark disparities in patent ownership.[17] Studies suggest women make up only 12% of the inventors listed on U.S. patents, and Black and Latino innovators are significantly underrepresented.[18] The PPAC is not particularly diverse, either. While the gender split is pretty even, the racial makeup is far from it. If the USPTO just keeps tapping current patent owners and attorneys to be PPAC members, it will miss perspectives of underrepresented, excluded innovators that need to be heard. It's a bit of a chicken-and-egg cycle that the USPTO could break by seeking out more public voices for its advisory committee.
So, what should we do about it?
First, the USPTO should keep all of its stakeholders in mind as it picks the PPAC's newest members. It is already an impressive group, but the agency should add different views and experiences to the table, for example:
Members who know firsthand what it's like to have someone else's invalid patent stand in your way;
Members from communities with limited access to USPTO resources; or
Members who have, as consumers, navigated markets where patenting strategies can stunt competition and drive prices up.
Last year the agency added a PPAC member — Charles Duan — with a strong background in how the public interacts with the patent system.[19] This is hopefully the start of a promising trend.
Second, Congress should mandate public representation on the PPAC. The statute currently calls for committee members to "represent the interests of diverse users" of the USPTO.[20] Congress should more clearly define the PPAC's composition, unequivocally recognizing the public as a critical stakeholder that deserves a voice on this committee — Congress could even go a bit further and expand the PPAC to a dozen members. We currently have a USPTO director, Kathi Vidal, with demonstrated interest in engaging stakeholders across sectors, but this statutory change would ensure that's always the case.
The USPTO does not get all of its advice from the PPAC — and it shouldn't. But especially for an agency with limited avenues for public engagement,[21] it's essential that when conversations are happening — including at the PPAC — policymakers make sure everyone gets a voice in how the patent system works.
Abby Rives is IP counsel at Engine, a policy, advocacy and research organization.
Disclosure: Engine is among the parties that nominated Duan for PPAC membership. The opinions expressed are those of the author(s) and do not necessarily reflect the views of their employer, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
Endnotes
[1] Bill Gates Quotes, Goodreads, https://www.goodreads.com/quotes/115111-your-mostunhappy-customers-are-your-greatest-source-of-learning (last visited Sept. 30, 2022).
[2] Committees and Meeting Materials, U.S. Food and Drug Administration, https://www.fda.gov/advisory-committees/committees-and-meetingmaterials (last visited Sept. 30, 2022) (linking advisory committee rosters and membership criteria).
[3] Internal Revenue Service Advisory Council Membership Balance Plan, IRS (Aug. 21, 2020), https://www.irs.gov/pub/irs-utl/irsac-membership-balance-plan.pdf; 2022 IRSAC Member Biographies, IRS, https://www.irs.gov/pub/irs-utl/irsac-member-bios.pdf (last visited Sept. 30, 2022).
[4] Patent Public Advisory Committee (PPAC), USPTO (Sept. 14, 2022), https://www.uspto.gov/about-us/organizational-offices/public-advisorycommittees/patent-public-advisory-committee-ppac.
[5] GSA Federal Advisory Committee Act (FACA) Database, FACADATABASE.GOV, https://www.facadatabase.gov/FACA/FACAPublicPage (last visited Sept. 30, 2022) (database of approximately 1,000 government advisory committees).
[6] 35 U.S.C. § 3.
[7] 35 U.S.C. § 5.
[8] See supra note 4 (listing links to PPAC annual reports).
[9] See, e.g., Abby Rives, Patents Impact Everyone. Our Policies Need to Reflect That, Technical.ly (June 6, 2022), https://technical.ly/civic-news/engine-patent-quality-weekpolicy/.
[10] Shawn P. Miller, Where's the Innovation: An Analysis of the Quantity and Qualities of Anticipated and Obvious Patents, 18 Va. J. Law & Tech. 1 (2013).
[11] E.g., Startups & The U.S. Patent System, ENGINE 6-13 (July 2021), available at https://www.engine.is/news/category/prioritizing-quality-and-balance-to-promoteinnovation.
[12] Collen Chien, Startups and Patent Trolls, 17 Stan. Tech. L. Rev. 461 (2014).
[13] Startups Need Comprehensive Patent Reform Now, ENGINE 7-14, https://static1.squarespace.com/static/571681753c44d835a440c8b5/57323e0ad9fd5607a3d9f66b/57323e14d9fd5607a3d9faec/1462910484459/Startup-Patent-Troll-Stories1.d.pdf?format=original (last visited Sept. 30, 2022) (recounting startup stories).
[14] Michael D. Frakes & Melissa F. Wasserman, Decreasing the Patent Offices Incentives to Grant Invalid Patents, THE HAMILTON PROJECT (Dec. 13, 2017), https://www.hamiltonproject.org/papers/decreasing_the_patent_offices_incentives_to_grant_invalid_patents.
[15] Promoting the Useful Arts: How Can Congress Prevent the Issuance of Poor Quality Patents?: Hearing Before the Subcomm. on Intellectual Property of the S. Comm. on the Judiciary, 116th Congress (2019) (testimony of Melissa F. Wasserman), https://www.judiciary.senate.gov/imo/media/doc/Wasserman%20Testimony.pdf.
[16] E.g., Doni Bloomfield & Aaron S. Kesselheim, Perspective, Biden Can Lower Drug Prices Without Congress Doing Anything, Washington Post (Jan. 5, 2021), https://www.washingtonpost.com/outlook/2021/01/05/drug-prices-patent-officegenerics-biden/; N.Y. Times Editorial Board, Save America's Patent System, N.Y. TIMES (Apr. 16, 2022), https://www.nytimes.com/2022/04/16/opinion/patents-reform-drugprices.html.
[17] E.g., Matt O. Dhati, Jamie Dohopolski, & Phillip R. Malone, Engine's Response to the Call for Comments on Expanding American Innovation, ENGINE 5-6 (Feb. 23, 2021), https://static1.squarespace.com/static/571681753c44d835a440c8b5/t/60366ecbd288114c62743c45/1614180046522/Engine+USPTO+diversity+comments.pdf.
[18] Report to Congress Pursuant to P.L. 115-273, the SUCCESS Act, USPTO (Oct. 2019), https://www.uspto.gov/sites/default/files/documents/USPTOSuccessAct.pdf.
[19] USPTO Announces New Public Advisory Committee Members, USPTO (Dec. 16, 2021), https://www.uspto.gov/about-us/news-updates/uspto-announces-new-publicadvisory-committee-members-1.
[20] 35 U.S.C. § 5.
[21] Integrating Public Voices Into the Patent System: A Blueprint for Reforms, IMAK, https://www.i-mak.org/wp-content/uploads/2021/11/I-MAKPublic_Participation_Blueprint-2021-11-15.pdf (last visited Sept. 30, 2022).
