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.

As we realized early on, while many lawyers enrich their personal and professional lives by volunteering in a variety of ways inside and out of the legal field, there can be a big difference between pro bono activity by private practice lawyers and those who are in-house. While those in private practice may receive the encouragement and support of their firms in pro bono efforts, including through access to firm resources for pro bono work and provision of malpractice insurance coverage, for practical reasons corporate counsel may not have the same access to resources even when their companies encourage pro bono efforts. Representing an individual in a matter unrelated to a corporate employer’s interests often requires some creativity.

Across the board we have found that in-house lawyers who want to represent others in pro bono matters face a number of issues that must be addressed before the lawyer may even begin providing legal services. These include ensuring malpractice insurance, trouble-shooting potential conflicts of interest, and ensuring continuity of assistance for the client if the lawyer acting on behalf of a pro bono client leaves the company.

In-house lawyers doing pro bono often need to obtain permission from the employer to perform legal services for someone outside of the organization, considering both subject-matter and ethical conflicts across the spectrum of business and legal areas in which the corporation and its lawyers may operate. There are requirements for basic forms and related supporting tools in order to act as a lawyer in a pro bono matter (for example, an engagement letter not on the employer’s letterhead, as well as professional liability insurance).

By and large, we have found increasing instances of corporations, including those we profile here, that embrace their legal departments’ desires to give something back by way of pro bono legal services and allow–and even encourage–their lawyers to create programs that do exactly that.

We looked at successful programs of four of our colleagues. Corporate employer support and dedication from these companies–Intel, BASF, HP, and Walmart—are examples of the best corporate citizenship that enable their lawyers to get involved in a new wave of intellectual property pro bono programs launched in recent years. Also common with all these companies is the creative dedication to pro bono and the company’s belief that such work is a win-win for both the communities and the skill and career paths of their legal teams.

BASF

At BASF Corporation, headquartered in Florham Park, New Jersey, support for providing pro bono legal services starts with its general counsel. The legal department provides pro bono service to advance the overall corporate goal of social responsibility and community involvement. Doing pro bono work enables BASF to provide legal services either directly to individuals who cannot afford them or to non-profit organizations that serve the needy and other charitable causes.

BASF considers pro bono service a way for attorneys to use their education and skills developed through practice to assist those who would not otherwise be able to afford its services. Pro bono is also a way for its attorneys to extend their particular area of expertise ways to new issues and considerations.

At BASF, patent attorney Clara Cottrell uses her patent preparation and prosecution background in protecting intellectual property from a contract standpoint. Cottrell volunteers with the North Carolina Lawyers for Entrepreneurs Assistance Program (NCLEAP) which provides legal services, such as trademark counseling/registration and patent services, to low wealth business owners. The Florham Park office partners with the Pro Bono Partnership whose clients are non-profit organizations located in New Jersey or New York and provide free business and transactional legal services to nonprofit organizations serving the disadvantaged. Matters handled for the Pro Bono Partnership include trademark procurement, copyright licensing, contract review, merger support, certification of incorporation drafting, bylaw review, and tax work. The Pro Bono Partnership and NCLEAP track participation of volunteer attorneys, and the Pro Bono Partnership provides reports to BASF on its participation; it, in turn recognizes attorney service.

BASF has worked with the Pro Bono Partnership to provide assignments similar to other cases that include contract review. Partnership projects are well-defined and limited, typically requiring only about two to four hours. The company also encourages its outside law firms to do pro bono work.

Cottrell also provided pro bono services prior to working for BASF. While in private practice, Cottrell assisted a low wealth entrepreneur through NCLEAP who needed trademark protection. The entrepreneur had a great business model and had used other NCLEAP attorneys to incorporate and put her business forward the correct way. BASF supported her work by performing a trademark search and filing a trademark application that Cottrell saw to registration. Cottrell was also able to discuss copyright issues that could arise from the creation of the trademark and draft an agreement that gave her full rights in that trademark.

“I am serving a very particular need,” says Cottrell, “taking the burden off of those I help and assisting entrepreneurs to be more successful—real intellectual property needs that can affect a business’s future.”

Hewlett-Packard

The legal team at Hewlett-Packard (HP) regularly participates in a number of different pro bono activities both within and outside the United States. Members of the team partner with different organizations to provide a variety of pro bono legal services. Some of these organizations are non-profit legal aid providers—others are law firms and other in-house legal departments. HP’s Office of the General Counsel (OGC) hosts and sponsors a number of pro bono activities throughout the year that relate to different causes and provide needed assistance to a wide cross-section of people. Every year, for example, members of the legal team teach high school students about the law, help veterans navigate the legal system so they can receive the benefits they are due, and advise clients on their rights when faced with a homelessness or domestic violence situation.

While HP attorneys generally manage their own pro bono projects, the OGC has its own pro bono committee that helps publicize pro bono activities, sets the department’s pro bono policies, and addresses questions that arise during pro bono representations. The committee is headed by two of the department’s deputy general counsel. If pro bono projects are part of a larger pro bono program, there may be one or more program coordinators to set program-specific policies, address program-specific issues that come up, and help streamline any program-specific processes. Avoiding a conflict of interest is really the only restriction that HP places on its attorneys participating in pro bono activities.

Each year, as a department, HP’s OGC also launches a pro bono challenge. In 2014, the goal is for 50% of the department (including attorneys and non-attorneys) to complete 15 hours of pro bono work. As pro bono work is completed, volunteers track their hours. The total number of hours are reported to the individual practice groups quarterly and the entire department annually. HP’s OGC also has a formal award program that recognizes members of the department quarterly for their contributions to HP and sometimes for their pro bono work and contribution to the outside community.

Gail Su is on the intellectual property transactions & counseling team at HP. She is the lead IP transactional counsel for HP’s global efforts on memristor technologies and HP Enterprise Group’s global supply chain. She is also part of a team of attorneys at HP who provide sole legal support for HP’s intellectual property sales and licensing business unit.

As coordinator for HP’s Patent Pro Bono Program, Su believes that her most important responsibility is to establish and maintain a streamlined procedure for conducting pro bono patent representations and to get management buy-in on the processes and policies. In her day to day work, she helps match pro bono clients with teams of HP employees and outside counsel, drafts and maintains a database of templates that can be used during the pro bono representation (e.g., engagement letters), facilitates conflicts checks, and helps teams work through other issues that arise. She has a ready team of volunteers that assist in different aspects of the process, from obtaining funding from HP management to securing management approval of procedures.

Su says that HP struggles with finding pro bono opportunities in areas where people who specialize in intellectual property feel comfortable giving advice. A year ago, she was tasked with setting up a patent pro bono program for members of the IP group to participate in. The response from the group was very positive, and both attorneys and non-attorneys chipped in to help pro bono clients draft applications, create drawings, conduct prior art searches, and maneuver through the USPTO website. A year later, 33 members of the team at HP represented clients in 16 different matters. In some instances, this IP team helped a client save money and time by helping them make the decision not to file a patent application that had a low chance of being granted. In other instances, the team helped clients file patent applications and draft responses to office actions from the USPTO. Su finds that those who participate in HP’s patent pro bono program are glad to be able to meaningfully and comfortably help clients understand a part of the legal system that can sometimes be confusing.

To prevent gaps in support for a pro bono client, HP attorneys tend to help clients with one discrete task at a time. For example, the company’s attorneys often participate in drop-in clinics or “attorney-for-the-day” type activities, where an attorney only assists a client for a pre-set amount of time. For example, HP’s patent pro bono program will take on one concrete step in the patent prosecution process, e.g. drafting a patent application, responding to an office action, etc. In the rare instance that an attorney leaves the organization prior to finishing a pro bono representation, the attorney is able to find another HP attorney to complete the representation or continues the representation at his or her new place of employment.

Notes Su: “Some people are left marginalized or voiceless—not because their voice is not worth being heard but because they do not know how to be heard. I take on pro bono patent cases because I believe that the single inventor can change the world. I help micro-entrepreneurs navigate business and contract law because I believe these creative and determined people inspire the community to be better.”

INTEL

Intel Corporation has a long history of supporting volunteerism among its employees, so it has been a natural for the company to support the pro bono efforts of its legal department. Intel is a charter signatory of the Pro Bono Institute/CPBO Corporate Pro Bono Challenge, a group of 100 major corporations that have demonstrated their dedication to corporate social responsibility through pro bono legal work by agreeing to use their best efforts to encourage their staff, including at least one-half of the legal staff, to support and participate in pro bono service. Since the program’s inception, Intel has made strides in integrating it into broader Intel-involved volunteering programs, as well as relationships to employee groups, such as Intel Veterans Group.

The Intel program is organized around major sites where it has legal presence. At initial launch in 2007, the program was set up by relationships with legal service providers in those communities focused on pro bono in the areas of guardianships, special education, low income entrepreneurs and housing, both in the form of client engagements and clinical settings. It has since evolved to expand across the United States and internationally by affiliation with organizations doing work in areas where its legal personnel are not located, such as U.S. military veteran’s assistance across the U.S.

Intel allows legal personnel to volunteer on matters through its formal relationships with NGOs and law firms, as well as through local bar associations and other legal service providers. The aim is the right fit for the volunteer—as long as the work does not conflict with Intel’s business objectives.

The company encourages volunteering by making resources available in terms of the use of assets like phones, computers, and office space and the paying of expenses incurred by volunteers when performing pro bono assistance. Intel generally chooses practice areas and issues that do not interfere with a job or conflict with its business interest. It has a co-chair coordinator position with two people filling the role and reporting up through its assistant general counsel. Below the co-chair role is a committee organized around its four main U.S. sites and international and subject matter programs, such as the low-income inventor patent law program. Intel finds this group, following company guidelines for conflicts, to be the best approach to meeting local work site needs and maintaining relationships with the NGOs in the respective locations.

Erik Metzger, Intel’s senior patent attorney, is in charge of the patent pro bono program for the legal group. He is also a board member of California Lawyers for the Arts and serves on the steering committee for that organization’s inventor assistance program. “I enjoy helping innovative people. I’m an innovation junky. I also like the idea of helping artists and inventors to get out of poverty and to be able to make a good living on their art or invention so that they don’t need pro bono assistance. To me, there’s no greater asset than a person’s ideas. Those ideas are as valuable as any other article of personal property.”

Metzger gives an example of one of Intel’s first patent pro bono clients involving two high school kids who participated in Intel’s International Science and Engineering Fair (ISEF), the largest science and engineering fair in the world. The kids had developed a highly useful and novel cancer treatment involving very low-cost radiation sources and testing mechanisms ideally suited for persons in developing countries. They had very little resources to file a patent [application] and really didn’t understand the process at all. The Intel patent pro bono program engaged them to see if they would be interested in patenting their invention. They were very interested, so Intel partnered with local counsel at Nixon Peabody, LLP to provide expert support in drafting and filing their patent application. This patent [application] will not only boost their resume when applying to colleges, but may also be a useful financial tool that can be used to help pay for college.

Metzger personally worked with two young filmmakers in Los Angeles who wanted to license the life rights of a state prison inmate who had turned his life around while incarcerated and emerged as a mariachi musician and songwriter. Says Metzger, “It was unusual not just because of his transformation, but because he was a white guy from New Hampshire. Predatory life rights licensees in LA had gotten to the subject before my clients and had bought an option to use the subject’s life rights for the purpose of selling it to a studio. He basically sat on the story preventing my clients from developing a documentary on the subject.”

So Metzger and his team got creative. They had the option owner agree to carve out only the documentary rights for a period of time that would allow Intel’s clients to make their documentary. The terms were agreeable to both the life right option owner and my clients and allowed them to create the film, which debuted this year at South by Southwest in Austin, TX. Intel provided needed legal advice for obtaining the documentary rights and proceeded to help them acquire other rights and provide advice they needed along the production path of this film. If asked, Intel intends to support them when they distribute the film.

WALMART

For Walmart, pro bono is at the heart of the way it gives back to the communities it serves.

Walmart’s pro bono work is facilitated through many avenues including Medicaid benefits and services, special education and adult guardianship, offering individual client representation through the Medical-Legal Partnership in collaboration with Arkansas Children’s Hospital and Legal Aid of Arkansas. Through that partnership, Walmart attorneys provide representation for children and their families where legal solutions are needed to help resolve health issues.

Pro bono at Walmart is entirely voluntary. The company encourages lawyers and professional staff to work as their workload allows and during regular business hours and provides a way for professional staff to do this work at the office. Walmart “buddies” up its in-house lawyers and also partners externally with some of its law firm partners. The company’s law firm partners are also committed to this work. Its national partner Akin Gump received an ABA Pro Bono Publico award in 2012. Walmart tracks hours and recognizes its attorneys yearly at an awards ceremony and throughout the year. There are no geographical limits and no industry restrictions, but the company does make sure there are no conflicts in the cases and does not take on the types of cases that are not aligned with its corporate position.

Walmart’s pro bono program is part of the company’s legal administration team, which also encompasses outside counsel relations and diversity and inclusion efforts. The pro bono program is managed by a full-time coordinator who handles case referrals, runs conflicts checks, and assigns projects to the in-house volunteers. She also coordinates assistance with discovery documentation, petition forms, hearing dates, appeals, and general questions.

Angela Grayson is associate general counsel, intellectual property, for Wal-Mart Stores, Inc. Grayson’s commitment to community service through IP pro bono was solidified in her previous work at DuPont where she was managing counsel for its IP Pro Bono Project. She was co-founder and co-chair of the Widener University School of Law’s inaugural Introduction to Intellectual Property Law Seminar, a community pro bono program geared toward entrepreneurs, artists, inventors, and non-IP lawyers. Grayson leads the national effort to establish IP pro bono inventor assistance aimed at serving low-income small and independent inventors by serving as a director and steering committee member of the America Invents Act Intellectual Property Pro Bono Advisory Council, whose work is in collaboration with regional inventor assistance programs, IP associations including that American Bar Association, and IP law school programs.

“At most of the companies where I have worked a pro bono program of some sort was in place. While I have done family law, living wills and many other pro bono projects, I find working with IP pro bono a uniquely satisfying experience. IP pro bono is right for our communities, and we have only just begun to explore the ways in which we as patent practitioners can provide sustainable and long term benefits to our communities through this very important work.”

Grayson adds “Intellectual property protection…can be a very important economic driver to independent inventors and in our small business communities.”

Patent Pro Bono Starter Kit for In-House Legal Departments

When Intel considered joining the California Inventor Assistance Program as a volunteer provider, the answer was an immediate, “NO!” from management. Unlike other pro bono work, patents are what Intel does in its day-to-day business. “The last thing we want is to work on some patent for a client that relates to something we’re developing and be accused of stealing an idea from a pro bono client.” When Metzger went back to management and asked what it would take to get to “yes” the answer was “zero risk.” So he spent months consulting with people internal and external to the company to figure out how he could get Intel to zero risk if they participated in the CIAP. He came up with an elaborate set of processes, steps, and safeguards that ultimately convinced management to give it a try. He also thought if Intel had these barriers to participating the program, then other in-house counsel probably would too. So he reached out to Gail Su at HP who had similar and differing concerns as Intel. Between the two of them, they thought it was a good idea to publish a living document addressing each concern faced by an in-house patent legal group when considering whether to participate in patent pro bono. It was very much appreciated by other companies with patent legal departments and helped get others involved in patent pro bono. This is a ‘how to’ manual for those who want to do patent pro bono but have never done it (i.e. most companies). Patent pro bono is relatively new, so there were no best-known methods or instructions that in-house departments could use to get started. The Starter Kit fills that need.

Advertisement

The TASA Group: When the property is intellectual, the smart choice is TASA.

 

 

 

Support Hurricane Relief

 

  • About LANDSLIDE

  • Subscriptions

  • More Information

  • Contact Us

Advancing Intellectual Property Law®