Nationwide Patent Pro Bono Program provides services and hope to underrepresented inventors

The Patent Pro Bono Program’s “Pathways to Inclusive Innovation” event, April 12 at Emory University School of Law in Atlanta, has roots that extend 14 years and about 1,100 miles to the north.

A 2010 lunch in Minneapolis between two renowned patent professionals sparked food for thought that eventually became an invaluable and historically significant resource for financially challenged inventors.

When Jim Patterson, an attorney with more than 30 years of experience in IP law, met with then-USPTO Director David Kappos, they began talking about pro bono work. Today, the USPTO collaborates with 20 independently operated academic and nonprofit regional programs in the Patent Pro Bono Program. The regional programs match financially underresourced inventors with patent practitioners in all 50 states, the District of Columbia, and Puerto Rico.

The Minnesota-based Patterson had volunteered on pro bono legal projects since his career began—including at inner-city clinics on landlord and family law issues.

After his lunch with Kappos, he received a call from John Calvert at the USPTO’s Office of Innovation Development, and added pro bono specialist Candee Goodman (then from Lindquist & Vennum) for help.

Goodman played a major role in establishing the Minnesota Pilot Pro-bono Inventor Assistance Program. That initiative got a big assist from LegalCORPS, a nonprofit entity committed to expanding access to the legal system for clients otherwise unable to afford business legal services.

“A week later, we received a call to say the project was approved and we were on our way,” Patterson said in an interview with BIG IP & Legal Solutions.

But first, there were myriad key details to work out: securing funding, establishing processes and procedures, promoting the program, and more.

Patterson noted that one important element in this or any pro bono program for inventors is ensuring they have projects that are worth the attorney’s time.

“If you open the door freely to independent inventors on a walk-in basis, you will see a wide range of interesting people but very few good ideas,” he told Big IP & Legal Solutions. “We knew that if we were going to ask attorneys to give up their time, we needed to make sure there was a proper screening of the candidates they would be meeting.”

Also important was establishing parameters for getting access to the program.

“If we started giving free advice to people who could be paying lawyers, then we’re simply taking away clients from the volunteers. So we needed to set a threshold of where you begin to pay.

“It can cost between USD 5-10K to obtain a patent. When it comes to screening for economical need, there’s a big gap between that and the poverty level.”

The team determined the cut-off would be roughly three times the national poverty level, a formula that is still used by most of these projects.

Sure enough, requirements for applicants listed on the USPTO’s Patent Pro Bono Page say:

“While each regional program in the national network may have distinct admission guidelines, these are the common requirements, generally speaking:

Income—Your gross household income should be less than three times the federal poverty level guidelines (though some regional programs may have different criteria)

Knowledge—demonstrated understanding of the patent system either by having a provisional application already on file with the USPTO or having successfully completed the certificate training course (certificado de formación en español)

Invention—ability to describe the particular features of your invention and how it works.”

The USPTO Patent Pro Bono Program was launched in 2011, part of the Leahy-Smith America Invents Act. The first and only federally funded pro bono project in the United States has changed the lives of thousands of people, from inventors who otherwise would have not had a platform for their ideas to those who have been helped by the inventions that have resulted.

Some of these inventions have life-saving possibilities, including a carbon monoxide detector (U.S. Patent No. 10,101,027) that resulted from a pro bono connection. “Systems and methods for cessation of carbon monoxide production,” invented by Mark Kohn, was patented on October 16, 2018.

The Patent Pro Bono Program has been of particular help to two historically underrepresented patent demographics: women and African Americans. In 2022, 35 percent of respondents to a survey of applicants using the Patent Pro Bono Program were African American or Black, and 43 percent were female.

For more information on Pathways to Inclusive Innovation, and to register: https://bit.ly/3T8BnBP

For more information on the Patent Pro Bono Program: uspto.gov/ProBonoPatents