The Global Impact of Pro Bono Intellectual Property Work

Impediments to Global Pro Bono Services in IP

Lawyers are notoriously risk averse. Much ink has been spilled assuaging recurrent fears of malpractice liability from pro bono activities. For example, the North Carolina Pro Bono Resource Center assures its volunteers that “[s]ome malpractice insurance providers automatically cover your pro bono work” and that “[a] rider for pro bono work may not be as expensive as you think.” In another example, Connecticut’s Pro Bono Portal reminds volunteers that “[t]he legal aid agency from which you accept a referral typically will offer malpractice insurance coverage for the case being referred.” Additionally, concerns about malpractice recur on many lists of “myths” about pro bono work.

However, many lawyers’ concerns extend beyond malpractice liability. In particular, the decentralized nature of licensure makes cross-border pro bono work difficult. During the COVID-19 pandemic, these difficulties were exacerbated as more and more attorneys began working remotely from jurisdictions in which they were not licensed. Attorneys were less likely to perform pro bono work because they were not licensed in the jurisdictions where they found themselves working (i.e., their homes). Even though many states allow out-of-state attorneys to provide pro bono services, they also often “require the out-of-state attorney to apply for authorization before delivering the pro bono services.” These jurisdictional problems are even greater for global pro bono projects. As noted in a 2016 report, “requirements of individual tribunals or courts may also act as an impediment for lawyers or law firms seeking international pro bono opportunities.”

In addition to risk calculus, many lawyers look for pro bono opportunities that seem particularly philanthropic. Some lawyers seek pro bono opportunities with marketing specifically in mind while other lawyers may simply want to feel like they are doing good. Regardless of the motivations, pro bono work tends to cluster in fields that seem particularly philanthropic. For example, in Maryland, the most popular area of law for pro bono work is family and domestic law. The American Bar Association reports that criminal law and immigration are popular areas of law for pro bono work.

Some lawyers think that IP work does not help disadvantaged people and thus is not philanthropic. However, it is well established that there are racial and socioeconomic disparities in inventorship. Reducing disparity between white and non-white inventors and between low-income and high-income inventors arguably provides societal benefits.

Trademarks, patents, and copyrights are also not mere tools of profitability. As the case studies herein will demonstrate, IP rights can be used to fundraise for humanitarian causes or to keep unsafe products off the market, among other philanthropic uses. Accordingly, even if pro bono IP services are not provided directly to disadvantaged people, social enterprises may benefit from pro bono IP services and use their saved costs and IP rights philanthropically.

IP Is Particularly Global

Patents, trademarks, copyrights, and even trade secrets are becoming increasingly globalized in our interconnected world. In every calendar year beginning with 2014, the U.S. Patent and Trademark Office (USPTO) has issued a majority of utility patents to applicants of foreign origin. International trademark applications originating from the U.S. accounted for over 18% of all international trademark applications in calendar year 2022. Additionally, renegotiation of copyright terms and enforcement provisions, previously set forth in the North American Free Trade Agreement, was a widely hailed achievement of the United States-Mexico-Canada Agreement. Even trade secrets are somewhat global based on the broad agreement to protect trade secrets in the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement. Therefore, pro bono work in IP law is more likely to have cross-border concerns than many other areas of law. For the same reason, though, pro bono work in IP law is also likely to have global philanthropic effects, as the following case studies will show.

Upskilling Workers: Shimmy Technologies

Founded in 2016, Shimmy Technologies aims to help apparel workers to upskill and reskill in light of ongoing automation. Sarah Krasley, founder and CEO of Shimmy, explains how pro bono IP work helped further Shimmy’s global mission and impact. According to Krasley, there are about 75 million workers employed in apparel manufacturing, and these workers are particularly susceptible to being forced out of work by automation. Krasley grew up in Allentown, Pennsylvania, and therefore understands the economic risks of relying on manufacturing for income.

Shimmy uses artificial intelligence (AI) to break language barriers and gamifies the upskilling experience. Combining AI with video games represents a unique approach to upskilling. Additionally, Shimmy has developed a mobile application that allows workers to upskill at their own pace and on devices that are most prevalent around the world (e.g., smartphones). The initial pilot of Shimmy’s products upskilled 110 garment workers with only four hours of tablet-based training using AI and gamification. Krasley estimates that Shimmy has now upskilled thousands of workers. “I’m proud of what we’ve built,” she says. Shimmy’s success is particularly impressive given that the team is “about 15 people,” according to Krasley.

Shimmy has programs in Bangladesh and Indonesia and is expanding to Central and South America. Shimmy’s accelerator, Acumen, connected Shimmy with Thomson Reuters Foundation’s TrustLaw service. Shimmy then benefited from TrustLaw by obtaining pro bono representation, particularly in IP. TrustLaw connected Shimmy with U.S.-based attorneys to represent Shimmy before the USPTO and with foreign attorneys to protect IP abroad. This is important for Shimmy, which has been “asked a lot to move into different countries” by embassies and existing brands that seek to upskill workers. Krasley speaks highly of the coordination that the U.S. attorneys provided across multiple foreign law firms. In particular, Shimmy needed IP protection for its inventions, copyrights, and trademarks when it expanded into new countries. Its U.S. attorneys “really helped coordinate with some other TrustLaw partners that are in those countries,” Krasley says.

Krasley notes that she tried to file her first patent application but found the process very difficult to understand: “Most of the stuff that comes through the [USPTO] is basically written in Greek.” Because Shimmy is a bootstrapped start-up rather than venture-backed, Krasley was concerned about the high costs of legal assistance. According to her, “Legal fees can destroy a start-up.” For a start-up without venture capital, pro bono work can make “the difference . . . in hiring another person or building a product out further.” Indeed, Shimmy has been able to develop a mobile application to complement its existing tablet-based upskilling programs.

However, receiving pro bono work has had more than a monetary impact on Shimmy and Krasley. She stresses that the peace of mind provided by competent counsel is almost as important as the money saved. Knowing that “some strange mailing [from the USPTO] can end up being very costly” places a lot of stress on founders and teams of bootstrapped start-ups. However, now confident that there are IP attorneys just a phone call away, Krasley and Shimmy do not view incoming mail with trepidation. As a result, they can focus more on developing their products and continuing to roll out upskilling programs.

Furthering Female Education: Be Girl

When Diana Sierra, cofounder and CEO of Be Girl, first developed a prototype of a reusable sanitary pad, she knew the importance of obtaining a patent on her invention. As an industrial designer, Sierra was very aware of the value of IP protection. However, Sierra notes that she is an exception. Many founders lack knowledge about the importance of timely IP protection. Often, “when they know [the value], it’s too late,” according to Sierra.

Sierra first became interested in solving global menstruation problems during her master’s program. According to her, when she traveled to Uganda in 2012 with her class on development, she saw firsthand how menstruation impacts female education. In particular, the lack of sanitary supplies kept young women out of school for days every month. These absences, combined with societal shame around menstruation, resulted in high dropout rates and perpetuation of gender inequalities.

With a friend’s help at a discounted rate, Sierra filed her first patent application and obtained a patent for about $3,000. She then founded Be Girl as a social enterprise dedicated to providing access to sanitary supplies that are appropriate to cultural practices and socioeconomic conditions. According to Sierra, having a pending patent application greatly accelerated her fundraising abilities. In other words, patents can have philanthropic value and not just potential profitability derived from excluding others in the marketplace.

As Be Girl grew, so did its patent portfolio and trademark filings, courtesy of the pro bono assistance it continued to receive. In addition to domestic protection, Be Girl’s pro bono representatives assisted with protection overseas, such as design protection in Mozambique, where Be Girl has a large presence. Be Girl’s expanded patent portfolio has also opened discussions with big players in the sanitary supplies market. According to Sierra, these discussions are important because Be Girl plans to use its negotiating power to insist on the safety and affordability of sanitary supplies before such products are pushed to market.

In addition to IP assistance, Be Girl was paired with the Halcyon incubator that provided legal services for corporate structuring and accounting services. All of the pro bono and discounted services that Be Girl received were essential; “we wouldn’t have been able to be here without all these people along the road,” Sierra says. Similar to Shimmy, Sierra and Be Girl have achieved a lot with a lean team of approximately 10 people. One of Be Girl’s biggest accomplishments to date was successfully filing an integrity report to halt a World Bank tender to a supplier for sanitary supplies in Mozambique. Be Girl knew that the supplier had a history of poor quality products and possible safety issues from cost-cutting measures. Sierra was able to file the integrity report thanks to the patent portfolio that Be Girl owned, which would have been infringed by the supplier.

Conclusion

There are many well-meaning enterprises that would benefit from pro bono IP services. Additionally, many of these potential clients have cross-border legal needs. For Shimmy and Be Girl, receiving pro bono IP assistance helped them pursue their goals of upskilling workers and furthering female education around the globe. Therefore, it is clear that providing pro bono IP advice and services has positive global effects.