In-House Pro Bono: Doing Intellectual Property Work for Those Who Need It Most

Vol. 7 No. 3

By

Mark R. Privratsky is a partner with Lindquist & Vennum, LLP, a Minneapolis-based litigation and transactional firm. His legal practice focuses on patent, trademark, trade secret, and related intellectual property litigation. In addition to handling dispute resolution, Mark advises clients in licensing and other transactional matters involving intellectual property.

Amy M. Salmela is a partner and registered patent attorney at Patterson Thuente IP in Minneapolis. She specializes in patent prosecution and IP portfolio management, particularly in the areas of electronics, medical devices and technology, and semiconductors.

Our focus on pro bono started with our respective personal interests in using the legal skills we were developing to assist those who could not afford to hire counsel. We have been involved in matters involving both intellectual property and other substantive areas. Between the two of us, we have represented patent applicants pro bono at the United States Patent and Trademark Office (USPTO) pro bono, worked with university IP law clinics, and provided pro bono clients legal services in negotiating development and licensing agreements and mediation and litigation of disputes. Together we have spent the past three years assisting in the formation of a program in Minnesota called LegalCORPS Inventor Assistance Program (IAP) that invites both in-house counsel and attorneys in private practice to provide pro bono patent prosecution services to pro se inventors. The IAP launched in June 2011 and has since been replicated in state and regional programs across the country. To assist in that expansion, in 2012 we wrote Patent Law Pro Bono: A Best Practices Handbook, which serves as the blueprint for many on how to create such programs. As leaders of the ABA Section of Intellectual Property Law’s Pro Bono Committee, we are helping further the Section’s commitment to pro bono, including an upcoming revision on the Best Practices Handbook, liaising with the AIA Pro Bono Advisory Group (which is made up of individuals representing intellectual property related associations, law firms, corporations, and university departments and offers a central framework for regional IAP programs), and serving on various local and national committees in support of IP pro bono efforts.

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