Feature

USPTO Patent Pro Bono Program

Jennifer M. McDowell

©2015. Published in Landslide, Vol. 8, No. 2, November/December 2015, 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.

Just 31 words, written into law four years ago, have created a sea change for modest means inventors and small businesses. Those words, codified in Section 32 of the Leahy-Smith America Invents Act (AIA), required the United States Patent and Trademark Office (USPTO) to work with intellectual property (IP) law associations to establish pro bono programs. Through a network of nonprofit organizations, law schools, and bar associations, this program links low income inventors with patent lawyers to file and prosecute their applications without any attorney fees. So why is the concept of patent pro bono such a big deal?

Independent Inventors Need Help

No one can really dispute that the patent system is complicated. Well-trained lawyers spend their entire careers learning the intricacies of patent drafting and prosecution. Even the most sophisticated independent inventor, armed with the best training offered by the USPTO, may find it difficult to file and advance his or her patent application through the often lengthy process required by the USPTO in the examination of the application. This is where a patent professional, licensed by the USPTO, can assist the inventor to ensure that the intellectual property is protected to the fullest extent allowed by law. With sufficient protection of their IP, these entrepreneurs can seek to commercialize their invention, which may not only take them out of the “under resourced” category, but can also advance the state of technology and lead to follow-on innovation.

Good Ideas Can Come From Anyone

So far, over two dozen patents have been issued to under-resourced inventors through the Patent Pro Bono Program. Considering that the first program began just four years ago, and the majority of programs began within the past year, and on average, it takes 26.6 months to receive a final office action, those results are impressive. The patents issued thus far have been primarily in the mechanical field, although many pro bono applications are also being filed in electrical, chemical, and other areas.

What’s more, many of the regional patent pro bono programs provide a wide range of services to inventors, beyond simply referring them to a patent attorney. For example, many of the nonprofits provide mentor matching, business-related legal referrals, networking opportunities, advice on licensing, and access to venture capital. These critical resources, often inaccessible to the small inventor trying to go it alone, may make the difference between an issued patent and one which the inventor commercializes. Certainly, with this type of assistance, the inventor will be better positioned to navigate the market, which will ultimately determine commercial success.

Patent Attorneys Can Make a Real Difference

This is the first time in history that patent professionals can volunteer their services in a structured environment within their field of expertise. Many lawyers often feel uneasy providing guidance in a subject matter outside of their routine practice. With the Patent Pro Bono Program, patent lawyers can help those less fortunate and meet their state bar’s pleas for performing pro bono work within the area of patents. Patent attorneys may find this work especially satisfying since small inventors often have unbridled enthusiasm and energy for their invention, and they genuinely appreciate the expertise that only an experienced patent professional can offer them.

Patent attorneys can also feel good about helping their community at the local level. The goal is to provide patent legal advice to the pro bono client, but the hope is that the client will turn the invention into a money making business that will generate jobs in their part of the country.

Efficiency Reigns Supreme

The USPTO kicked the Patent Pro Bono Program into overdrive after President Obama issued an Executive Action in February 2014, requiring the Office to make patent pro bono services available to residents of all 50 states. At that time, fewer than 18 states had access to a patent pro bono program.

Starting in mid-2014, the USPTO appointed the first-ever Pro Bono Coordinator and hired a team of two patent lawyers to fulfill the new Executive requirement. In less than one year, the pro bono team crisscrossed the country to facilitate the launch of new programs, leverage existing programs to take on new states (where possible), generate publicity for the programs in order to encourage inventor participation and attorney volunteerism, and interact with the Pro Bono Advisory Council (PBAC) to address high-level policy issues inevitably arising from the rapid expansion of the program. The team also worked with the American Intellectual Property Law Association (AIPLA) and the American Bar Association (ABA) to publicize the program, gain volunteers, and participate in the Pro Bono Committees of both groups.

Both ahead of schedule and under budget, the USPTO achieved “success” in that it met the demands of the President’s Executive Action and satisfied, at least in the initial establishment, the requirements of Section 32 of the AIA. Every state in the union is now covered by the program, no small feat within a short period of time.

The USPTO has done much more than simply check a box though. By working closely with the PBAC, the USPTO significantly improved the operation of the Patent Pro Bono Program. To start, PBAC began to hold regular meetings, formed subcommittees to address various topics, and piloted its way through the massive changes experienced during the last year of program growth.

The USPTO began collecting metrics from the eighteen regional patent pro bono programs in January 2015, as a way to gauge operational efficiency of the programs. The PBAC Metrics Subcommittee provided well-considered thoughts on which metrics made sense to collect and how to utilize the information once collected. Unquestionably, the data gathered will be a useful management tool for the PBAC as the program moves forward.

The USPTO also provided factual information about the structure of the regional programs to the PBAC Subcommittee on Insurance. For attorneys practicing in a law firm, insurance is generally not an issue since they typically are covered by their firm’s policy when providing pro bono service through a regional program referral.1 But for in-house counsel, who are typically not covered by a malpractice insurance policy, volunteering in the pro bono context is not possible without professional liability insurance. The Patent Pro Bono Program certainly cannot spare such a large and valuable source of patent lawyers to be unable to volunteer for the program.

Between the 2011 inception of the Patent Pro Bono Program until a year ago, the lack of adequate malpractice coverage was viewed as the number one threat facing the program. During that time frame, less than half of the programs provided some type of liability insurance for in-house volunteer patent attorneys. For the past year, the PBAC Subcommittee on Insurance has worked tirelessly with numerous insurers, from around the world, to outline a framework under which all regional programs can obtain coverage for their volunteer lawyers. Now, the PBAC Subcommittee on Insurance has found insurers available to the regional patent pro bono programs, so that in-house lawyers are no longer excluded from volunteering. Removal of barriers to entry for lawyers into the program will allow more inventors to be helped.

The USPTO has further worked with PBAC to reconsider the governance structure of the organization as the program moves into the future. The key to future success will be the self-sustainability of each regional program, on its own terms, without heavy reliance on USPTO assistance. As we pivot from this first phase of the Patent Pro Bono Program to a more sophisticated and progressive structure, informed by the valuable lessons we have all learned over the past years, the concept of patent pro bono will become firmly entrenched as part of the landscape of IP.

Perhaps Senator Leahy summed it up best when he spoke at a press conference in Burlington, Vermont, on June 22, 2015, “The Patent Pro Bono program will make sure that anybody with an innovative invention, regardless of income, has the ability to take advantage of the crucial protection that patents afford.” And that is why patent pro bono is such a big deal.

Endnotes

1. Attorneys should check their firm’s specific professional liability policy to determine the scope of coverage while engaging in pro bono work.

Jennifer M. McDowell

Jennifer M. McDowell is the USPTO’s Pro Bono Coordinator, a position created pursuant to President Obama’s February 2014 Executive Action. Prior to leading the Pro Bono program, Ms. McDowell was an associate counsel for the Office of the General Counsel and was responsible for the legal clearance of patent and trademark rules for the agency. Produced by the United States Patent and Trademark Office; no copyright is claimed by the United States in the article or associated materials.