Minnesota Pro Bono Pilot Program Helps Independent Inventors Gain Patent Counsel

october 2012

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Minnesota Pro Bono Pilot Program Helps Independent Inventors Gain Patent Counsel

By John Calvert, USPTO Office of Innovation

Ed. Note: This article is re-published here with permission from the U.S. Patent and Trademark Office (USPTO). The article originally appeared in the August/September 2011 edition of the Inventors Eye, the USPTO's bimonthly publication for the independent inventor community.

One comment most often heard from independent inventors is that it costs too much to get a patent. What these inventors are saying is that they can’t afford the cost of getting competent legal service to assist them in the preparation and prosecution of their patent application. This message has been repeated over and over again in emails, phone conversations and personal contacts with inventors from all across the United States. We at the USPTO have discussed this need with different legal groups across the country and had not been given any positive encouragement as to the possibility of forming any type of pro bono legal service for inventors. That is until Under Secretary David Kappos discussed this problem with Jim Patterson of Patterson Thuente IP, in Minneapolis, Minn.

That discussion led Jim to say, “Why not?” He went to work on the problem and brought in Candee Goodman, a pro bono specialist from Lindquist and Vennum in Minneapolis. They discussed the situation and then met with officials at the USPTO to see how their ideas could be used to start a pro bono program. One year and much work later there is an official pro bono pilot program in Minneapolis that has a goal of helping financially needy independent inventors and small businesses in gaining patent counsel for their inventions.

One of the first things Jim and Candee did was to put together a team to define how the process would work. They started to work with LegalCORPS of Minneapolis, an established non-profit that assists microbusinesses and non-profits. LegalCORPS was already dealing with pro bono services for businesses and was a perfect match for this new IP pro bono service. As work progressed, it became apparent that LegalCORPS would need to increase their capacity and staff size to accommodate the new IP pro bono pilot program. After much thought and discussion the team decided that it would be appropriate to ask the inventor to assist in covering some of the administrative expense for LegalCORPS. The new term for this pro bono program became, “low bono.”

This pilot program has the backing of the Minneapolis-St. Paul intellectual property legal community. Not only have many intellectual property firms stepped forward to offer legal assistance, but many in the local business community have also contributed financially and with offers of service from their in-house legal staff. With this kind of commitment from everyone involved, the outcome should be a rousing success.

The LegalCORPS Inventor Assistance Program was officially launched on 8 June 2011. Since this program is only a pilot, the organizers are still learning what can and cannot be done to assist inventors and needy small businesses. To help jump start the pilot they will be looking for inventors that are Minnesota residents that have already filed a non-provisional application, but find their applications in a rejected status. In the near future, this may expand to include individuals that have filed a provisional application, but who need assistance in filing a non-provisional application.

The long-term goal is to offer services to inventors and small businesses that meet a certain financial need level, currently 300 percent of the poverty level, have done a search themselves or through a service provider, and have gone through a training package currently being developed by the USPTO. The training package will be available on the USPTO website within the next couple of months. Anyone who participates in this pro bono program will be responsible for the USPTO fees and the administrative fee set by the LegalCORPS Inventor Assistance Program. This administrative fee will help make sure that the pilot program can continue to use the services of LegalCORPS.

The USPTO is encouraging additional cities to look at the Minnesota program to see if its model will work for their state or locality. There have already been encouraging signs from across the country where other cities are willing to proceed using the LegalCORPS model. However, as with any pilot program, the USPTO is suggesting caution with a wait and see approach so that others may learn from any difficulty found in the implementation or operation of this first pro bono program.

The USPTO Office of Innovation Development is also getting ready to launch an interactive map with information for inventors by state. Any new pro bono program will also be identified by state on this map. The USPTO continues to work with companies, legal associations, inventor organizations and others to provide inventors and small businesses with contacts, information and assistance.