An Overview of the Patent Pro Bono Program

John KirkpatrickPatent Pro Bono Program CoordinatorDecember 3, 2015

2

Patent Pro Bono Program

• Assists financially under-resourced independent inventors and small businesses.– Section 32 of the AIA calls on the USPTO to work with and

support IP law associations to establish pro bono programs.– Executive Action in February 2014 required the USPTO to

expand the programs to all 50 states.

• Regional partners work to match underserved inventors and small businesses with volunteer attorneys/agents to file and prosecute patent applications.  

3

Pro Bono Program – December 2015

4

Patent Pro Bono Program Mission

• Increase accessibility to the patent system.

• Promote small business growth and development.

• Help ensure that no deserving invention lacks patent protection because of a lack of money for IP counsel.

• Opportunity for patent attorneys to serve in their area of expertise.

5

Benefits of Representation

Pro se applicants (not represented by counsel):

• Are not always aware of what protection a patent gives them;• May be unfamiliar with a complicated patent system;• May lack the necessary knowledge to draft their own patent applications (format, forms, understanding of prior art).

6

General Criteria for Inventors

• Gross household income – region dependent, but most regions limit to 300% of the poverty levels.– A single person could have an income of up to $34,470.– A family of 4 could have a gross income of up to $70,650.

• Knowledge of the patent system.– Have at least a provisional application on file with the USPTO or

successfully complete the certificate training course at http://www.uspto.gov/video/cbt/certpck/index.htm.

• Have an invention, not merely an idea.– To demonstrate that there is an invention one should be able to describe

the invention so that someone could make and use the invention (“reduction to practice”).

• Pay all USPTO fees (discounts may be available).• Be an active participant in your patent application prosecution!

7

Micro-entity Fees75% reduction in fees

• The AIA defines a micro entity as an applicant who certifies that he/she:– Qualifies as a small entity;– Has not been named as an inventor on more than 4 previously

filed patent applications;– Did not, in the calendar year preceding the calendar year in

which the applicable fee is paid, have a gross income exceeding 3 times the median household income; and

– Has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is paid, had a gross income exceeding 3 times the median household income.

8

Applying to the Patent Pro Bono Program

Two ways to apply:

1. Apply through an online portal, the National Clearinghouse, operated by the Federal Circuit Bar Association– www.fedcirbar.org– www.uspto.gov/inventors

2. Apply directly with your regional program – Texas/Louisiana:• https://www.thecenterforinnovation.org/texas-aia-uspto-pro-bono-patent-assistance-program

• Kelly Jackson Director, Pro Bono Assistance Program505 E. Border StreetArlington, TX 76010(214) 783-1499

• Sherry JacksonDirector, Executive OfficeArlington Chamber of Commerce505 E. Border StreetArlington, TX 76010(817) 543-4287

9

Law School Clinical Certification Program• The Law School Clinic Certification Program

‒ Permits law school students enrolled in a participating law school’s clinic to practice patent and/or trademark law before the USPTO,

‒ under the guidance and supervision of an approved Faculty Clinic Supervisor,

‒ while providing their legal services pro bono (free) to Inventors/Applicants.

‒ Inventors/Applicants are responsible for USPTO filing fees and costs.

• Texas schools participating include South Texas College of Law, Southern Methodist University Dedman School of Law, Texas A&M School of Law. 10

Website for the Programhttp://www.uspto.gov/learning-and-resources/ip-policy/public-information-about-practitioners/law-school-clinic-1

Pro Se Assistance

• The Pro Se Assistance Program offers various services for the public, including:– Dedicated personnel for assisting people filing applications

without the assistance of an attorney.– Walk-in assistance for the general public at USPTO

Headquarters (by appointment).– A fully equipped public computer workstation for walk-in

visitors at the USPTO.– Targeted support to connect applicants with relevant

resources and information.

• Online resources found at uspto.gov.• 1 (800) 786-9199

13

Additional Information

• Comprehensive Information and Training Material for First Inventor to File: http://www.uspto.gov/aia_implementation/patents.jsp#heading-10

• Inventor Resources: http://www.uspto.gov/inventors/index.jsp

• IP Awareness Assessment Tool: http://www.uspto.gov/inventors/assessment/index.html

• Scam Prevention: http://www.uspto.gov/inventors/scam_prevention/index.jsp

• Pro Bono: http://www.uspto.gov/patents/init_events/pro_bono.jsp

• Utility Patent Application Guide: http://www.uspto.gov/patents/resources/types/utility.jsp

14