The Pro Bono Program of the U.S. Patent and Trademark Office (USPTO) provides independent inventors and small businesses with access to patent advice that they otherwise could not afford. We spoke to Jim Patterson of Patterson Thuente IP to discover the origins of the now nationwide network of independently-operated regional programs and what it was set up to achieve.
In the race to bring an innovation to market, it is the financially under-resourced who are most at risk of being left behind. Coming up with an idea is only the first step of a longer and far more expensive journey to obtain and enforce patent protection. Those without the big budgets or resources of their larger competitors may find that they are already at the back of the pack. It is here that IP pro bono projects have a crucial role to play.
Nonetheless, it may be surprising to learn that the USPTO’s flagship Pro Bono Program – the first and only federally funded pro bono project in the US – was many years in the making. Now a nationwide network of independently operated regional programs, the first of these was set up in Minnesota in 2011, and later expanded throughout the US to 50 states, and now also extended to some countries through the World Intellectual Property Organization (WIPO).
As one of the architects of that program (alongside pro bono specialist Candee Goodman), Minnesota-based Jim Patterson was able to draw on a rich experience volunteering at pro bono legal projects that stretched back to the very start of his career. Patterson cut his teeth in the pro bono realm at inner-city clinics, helping people with landlord and family law issues. He continued this work through much of his career while practising law first at the large national firm Dorsey & Whitney and then at his own firm, which he co-founded 30 years ago.
However, it was an opportune discussion at a conference with David Kappos, then Undersecretary of Commerce for IP and Director of the USPTO, that led to Patterson’s involvement in the Pro Bono Project. An informal discussion with Kappos on the topic was swiftly followed up by an unexpected call from John Calvert at the USPTO’s Office of Innovation Development, at which point he brought in Candee Goodman from Lindquist & Vennum (now Ballard Spahr) to assist. “When we submitted our ideas [developed over an evening’s brainstorm], we thought that would be it. Instead, a week later, we received a call to say the project was approved and we were on our way.”
Of course, before the project could be launched, the team first needed to secure the necessary funding, iron out the processes and procedures, and promote the program to generate support and volunteers. This itself was no mean feat to achieve.
Establishing a basis for giving back
Although often used as shorthand for ‘free’ advice, the term pro bono comes from the Latin pro bono publico, meaning ‘for the public good’. In other words, it’s a chance for lawyers to give something back to the community.
It is here, however, that the challenge can often be found for IP pro bono projects, as opposed to general legal advice. As Patterson explains: “If you open the door freely to independent inventors on a walk-in basis, you will see a wide range of interesting people but very few good ideas. We knew that if we were going to ask attorneys to give up their time, we needed to make sure there was a proper screening of the candidates they would be meeting.”
The next step was to set the parameters for gaining access to the program. “If we started giving free advice to people who could be paying lawyers, then we’re simply taking away clients from the volunteers,” explains Patterson, “so we needed to set a threshold of where you begin to pay.” Again, this differed from a general legal pro bono project: “It can cost between USD 5-10K to obtain a patent. When it comes to screening for economical need, there’s a big gap between that and the poverty level.” The team played around and came up with three times the poverty level as the cut-off, which is still used by most of the projects today.
Pre-screening assessments are conducted by a board of lawyers who appraise the projects and refer those that meet the criteria on to the attorneys. How do they draw the line? “Inventors have to have some skin in the game,” says Patterson, explaining that this is something he learned volunteering at the walk-in clinics. “They have to be willing to take part in a screening and make the necessary effort or investment, either in time or money, to advance their projects.” He gives as an example filing a provisional application or taking a course in patent fundamentals.
But, with less than a fifth of output from research and development (R&D) making it to market, not every invention will make it beyond the clinic. “Not every user goes on to file or enforce a patent,” agrees Patterson, but he says he has been surprised at the quality of some of the disclosures: “The real brass ring is to have a client build a successful business around their innovation. That’s what the whole patent system was set up to achieve.” But, he notes that, “too many entrepreneurs give up too quickly, which is why the pro bono project is so necessary.”
Caption: The USPTO’s data shows that inquiries have been steadily growing nationwide in the last five years.
A sample of the program’s recent activity in Minnesota reveals that 47% of users went on to file a utility patent, 30% a provisional patent application and 13% a patent application, while only 17% took no further action. Although Patterson adds that: “It can be just as important to give people the chance to be heard. That can be a large part of giving access to justice.”
It’s an equally rewarding program from the perspective of the volunteer attorneys. Patterson says the project has never had problems with recruiting lawyers or gaining the support of the Bar Associations. Indeed, the future for IP pro bono looks bright, with initiatives underway to further internationalize the project at WIPO, as well as to provide pro bono services at the US Patent Trial and Appeal Board (PTAB) and to expand the pro bono program of the International Trademark Association (INTA).
For more information on the USPTO’s Pro Bono Project, please visit: www.uspto.gov/patents/basics/using-legal-services/pro-bono/patent-pro-bono-program