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A Cooperative Clinic/Corporate Patent Pro Bono Project

©2014. Published in Landslide, Vol. 7, No. 1, September/October 2014, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Many enthusiastic and motivated pro se patent applicants are the kind of “garage inventors” and startup entrepreneurs we all hope the patent system will enable to thrive. But such pro se patent applicants can be hindered by complex rules and procedures—not to mention the cost of obtaining patent counsel. In the past few years, new patent pro bono programs have been formed to help those inventors navigate the patent system.

Thanks to the Law School Clinic Certification Pilot Program at the United States Patent and Trademark Office (USPTO), students in certified clinics are given limited practitioner status to work under the guidance of professors and practitioners and to provide pro bono intellectual property legal services. The Intellectual Property Clinic at William Mitchell College of Law in Saint Paul, Minnesota, one of the first schools to receive certification under the program, pairs inventors with its students, who are able to file and prosecute patent applications at the USPTO on the inventors’ behalf. While the clinic occasionally turns down cases when an applicant has the resources to hire paid counsel, there is no income eligibility cap. Rather, cases are accepted that provide good educational opportunities for clinic students. Those students can share what they learn in each representation with their colleagues, and professors review their work to ensure high quality product. Many of these students say that their work in the clinic was the highlight of their time in law school.

The LegalCORP Inventor Assistance Program (IAP) is non-profit organization dedicated to matching small businesses with volunteer business attorneys to obtain pro bono legal advice. In contrast with the various clinics, the IAP is dedicated solely to matching inventors with volunteer patent attorneys for pro bono patent prosecution services. This group relies on volunteer attorneys, rather than students and selects cases using different criteria than the clinics. The IAP has an income eligibility requirement (currently set at 300% of the federal poverty level), and cases are selected by LegalCORPS that appear likely to have patentable subject matter, but in which the applicant may need a patent attorney’s assistance. In less than three years of operation, the IAP has matched more than 50 inventors with volunteer patent attorneys, and 11 of those inventors have received patents (with many more still pending).

In 2012, William Mitchell’s Intellectual Property Clinic and LegalCORPS’s IAP experimented with a first-of-its-kind hybrid of their two programs. A clinic student, Daniel Bruzzone, was paired with an IAP volunteer, Jean Lown, to draft and file a patent application together.

The inventor, John Webb, was concerned with the waste and dangers associated with corrodible, non-recyclable, steel cylinders used to contain heating fuels, which themselves often generate soot and carbon buildup on combustion. Drawing on his experience as a retired welding and shop teacher, Webb invented a fuel blend that is much more environmentally friendly than conventional products, and a canister system to contain it that is reusable and recyclable. The inventor described his desire to make a positive impact on the environment for future generations, and together with like-minded entrepreneurs, started a business to manufacture and sell his products. However, in order to compete in the competitive fuel-gas marketplace, he wanted a patent on his inventions.

The cooperation between the clinic and the IAP in this inventor’s case provided benefits for everyone involved. The inventor acquired the benefit of the IAP volunteer’s years of experience in chemical technologies that she brought from 3M. The volunteer attorney was able to take on a pro bono case and rely on the student to perform preliminary drafting, inventor interviews, client communications, and prior art searching. In turn, the student gained a professional contact and experience working directly with a veteran patent practitioner while still in law school, and learned new perspectives and best practices regarding patent prosecution.

The ultimate benefit for the inventor and this pro bono team: U.S. Patent No. 8,733,543 (granted May 24, 2014).