Patent Pro Bono ProgramJeffrey SiewAugust 13, 2015

What is Patent Pro Bono?

• Through a network of regional nonprofits, universities, and bar associations, under-resourced inventors are matched with patent lawyers who volunteer their free services in the patent application and prosecution process

Nationwide Pro Bono Expansion

All Fifty States

CIAP Mi Casa Resource Center Upper Midwest Program Center for Innovation Missouri Program Michigan Program Indiana Program NC Leap FCBA Pennsylvania Program New York Tri State Program Northeastern Program Georgia Program Southern Program Flobono Illinois Program Ohio Program

Presidential Announcement August 5, 2015

President Obama Announced New Commitments from Investors, Companies, Universities, and Cities to Advance Inclusive Entrepreneurship at First-Ever White House Demo Day.

The USPTO announced that its Patent Pro Bono Program, which provides free legal assistance to under-resourced inventors in securing patent protection for their inventions, will now extend to all 50 states.

Why have a Patent Pro Bono Program?

• Patents are expensive

• The patent process is complicated

• Pro se applicants consume disproportionate amount of patent examiners’ time

• Promotes growth of small businesses and entrepreneurialism

• Ensure that no deserving invention does not receive patent protection because lack of money for IP counsel

Background• Section 32 of the America Invents Act: USPTO directed to work with

and support intellectual property law associations to establish pro bono programs across the nation.

• America Invents Act Pro Bono Task Force convened in October 2011 to coordinate nationwide efforts to develop similar programs in other areas of the country.

 • Transformed, by charter, into the America Invents Act Pro Bono

Advisory Council on October 25, 2013: an interim governance body designed to provide support and guidance to existing pro bono programs and to encourage development of new programs.

Background (cont.)Presidential Executive Action issued on February 20, 2014, requiring:

• Appointment of a full-time Pro Bono Coordinator at the USPTO

• Dedicated educational and practical resources for pro se applicants

• Goal of expansion of IAPs to cover all 50 states

How It Works

• Inventors and/or small businesses must qualify for the regional program

• Must comply with program’s requirements– Ex.: Fee, providing income documentation

• Do not disclose your invention at this point!

General Criteria

• Income threshold

• Knowledge requirement

• An invention, not just an idea

How to Apply

• Preferred Method: through the regional program where you live– Find it at www.uspto.gov/probonopatents

• National Clearinghouse: – http://www.fedcirbar.org/olc/pub/LVFC/cp

ages/misc/pto.jsp

Don’t Forget• Inventor is still responsible for all USPTO fees, though

discounts may be available

• There are other options if you do not qualify for the Program– USPTO certified law school clinics

• For example, New York: Brooklyn Law School, Fordham University School of Law, and New York Law School

– USPTO Pro Se Assistance Program• http://

www.uspto.gov/patents-getting-started/using-legal-services/pro-se-assistance-program

For Additional Information• www.uspto.gov/probonopatents

• http://www.uspto.gov/learning-and-resources/ip-policy/public-information-about-practitioners/law-school-clinic-1