It Started with a Study
In 1998, the US Patent and Trademark Office (USPTO) conducted a study that looked at some of the hurdles independent inventors faced in getting their inventions into the marketplace. Results showed that the cost of getting a patent was one of the biggest difficulties for inventors to overcome. This one answer was surprising to the USPTO since the fees for filing a patent application were relatively low and continue to be low to this day. When this problem was further analyzed, it came to be understood that the problem wasn’t the cost of the filing fees required to get a patent but the cost of hiring an attorney. Attorney fees have always outweighed the patent fee cost, but this survey highlighted overall costs as a difficulty that inventors faced when preparing a patent application.
In response to the survey, senior management at the USPTO initiated an an effort to start a pro bono program aimed at assisting independent inventors. A number of local law associations were approached, but none wanted anything to do with patent pro bono services. Two major objections were given: conflicts of interest and the potential negative involvement of the inventor. When pressed on the second issue there were two major responses. First, independent inventors were more likely to sue the lawyer offering the pro bono service if a patent was not received. Second, the inventor would hand off the invention to the attorney and would walk away without any assistance to the attorney.
All of the negative factors were assessed and additional law associations were again approached in 2004, 2005 and 2006. Again each of these attempts was met with resistance and negative comments to the entire concept.
Renewed Interest Leads to Patent Pro Bono Pilot Program in Minnesota
After the appointment of David Kappos as head of the USPTO during the Obama Administration, there was a renewed interest in pro bono. Mr. Kappos was very interested in making pro bono happen. He said that “no deserving invention should die due to lack of funds to get a patent.”
In April 2010, Mr. Kappos was invited to give a speech in Minneapolis, Minnesota where he had a conversation with a local patent attorney, Jim Patterson. During their conversation the subject of pro bono came up and Mr. Patterson explained why Minnesota would be the perfect place to start a pro bono program. Mr. Kappos must have agreed as he sent emails connecting key players at the USPTO (including yours truly) and Mr. Patterson.
During the next few weeks, this team met and began laying the foundation of the Pro Bono Patent Assistance Program, including setting some basic boundaries such as; any inventor entered into the program must pay their own fees associated with filing and issuance of a patent, there would be a financial limit set for income equal to 300% of the poverty scale (three time greater than normal financial limits), not all inventions would be accepted – there needed to be something that had potential marketability and the inventor needed to stay involved with the attorney for work to progress.
Under the guidance of USPTO officials, the Minnesota-based team went to work putting together a group of attorneys and other interested folks to work out details of how a program would work and sent a basic outline back to USPTO. The OK was immediate from the USPTO and work began fast tracking the project. On June 10, 2011 the first test Patent Pro Bono Program was officially launched in Minnesota.
What made this program unique was the structure of its formation. An applicant would be screened for financial acceptance and then the invention would be critiqued by a board of attorneys who entered into non-disclosure agreements with the applicant. This board would review the invention before passing it on to attorneys who might be able to assist in the patent application process. Conflicts of interest were eliminated by giving multiple attorneys the opportunity to work on the application. These attorneys were provided with enough information where they could make a determination of conflicts before they accepted or declined work on the invention.
The basic rules set in the April 2010 meetings and the proven ability to removal of conflicts of interested helped mitigate the earlier objections brought up by law associations. The second objection, not having the inventor involved, was solved by requiring anyone accepted into the pro bono program to pay the fees associated with filing their application with the USPTO. With this financial involvement each accepted applicant would be required to be involved with the prosecution of their application.
The review board of attorneys in the Minnesota program also checked for viability of the invention. A decision was made early that not all inventions would qualify for pro bono assistance. The review board would lookout each application to see if there was something that had the potential to make it in the marketplace or to be licensed by someone to produce the invention. While this is a judgment call, it also gave some level of assurance to attorneys that might take an invention as a pro bono project, that there had already been a preliminary review of the invention and it was accepted for further processing.
In order to jump start this new program, the USPTO contacted inventors from Minnesota who had filed a patent application without the assistance of an attorney within a previous six month period. This contact was in the form of a letter informing the inventors of the new pro bono program and how to get in contact with the person in charge of intaking new applicants. These letters were sent a couple times and resulted in a number of individuals who were accepted into the new Minnesota Inventors Assistance Program.
America Invents Act calls for Nationwide Pro Bono Patent Assistance
The first applicant in the Minnesota Inventors Assistance Program was accepted and signed a power of attorney on September 11, 2011. This was approximately 18 months after the first Kappos-Patterson-initiated discussions, and was the same date of the signing of the America Invents Act, which included a section specifically dedicated to creating a nationwide pro bono program.
Per the America Invents Act that placed an emphasis on establishing additional pro bono programs across the country, the USPTO began reaching out to other states with an initial goal of establish pro bono in 70 major cities over a five year period. California, Washington, DC, Denver and a couple other areas were contacted once the Minnesota program was established with a general framework of how to begin a program. Colorado was the next program to be established followed by California and Washington DC. Colorado was similar to Minnesota since it was only able to assist inventors from Colorado. California was different since it took on Nevada, Oregon, Washington, Arizona, Alaska and Hawaii in addition to California. This was the first true regional program.
Washington, DC took on additional duties by accepting the role of a clearing house for applicants. What this meant is that anyone who had the potential of pro bono representation in their state would apply at a single location which would screen for finances and for potential of the invention. DC would also cover Maryland, Delaware, Washington, DC and Virginia by placing inventors meeting the program requirements from these areas with a volunteer attorney. This was the second regional program.
During the beginning of these programs there were semi-annual meeting with representatives of the programs, representatives from the USPTO including Under Secretary Kappos, representatives of the courts including Chief Judge of the Court of Appeals for the Federal Circuit and a representative from Congress. This group was call the pro bono steering committee and was essentially run by the USPTO. These meetings helped establish ground rules, work out difficulties and other technical issues associated with the establishment of these new programs.
In October 2013 the USPTO took a step back from the overall running of the steering committee and turned the everyday functions of the many programs over to the public. Although the America Invents Act required the USPTO to work on creating pro bono programs across the country the functionality of the steering committee was best served by turning the actual solution to problems associated with the many programs to a committee made up of actual program participants. The USPTO still met with the steering committee but in a capacity as an advisory member.
By June of 2014 there were more than 10 programs in existence covering more than half the USA. The USPTO took the step of assigning a person full time to completing the establishment of programs and having all 50 states with pro bono coverage for inventors. This goal was achieved in late 2014 with the establishment of 15 total programs covering all states. The completion of providing pro bono to all residents of the US has been a great accomplishment.
Growing the Program
Today additional programs have been established taking some of the pressure off programs that were covering large, multi-state regions. Additionally, a non-profit association was established with the assistance of the USPTO for running the day to day to day operation of the overall pro bono program in the US. This association has hired a full time executive director who was one of the original people involved in the 2010 meeting at the USPTO. The USPTO has assisted financially with the association for a limited number of years that should help establish this program as enduring for a great number of years. An international program has also begun based on the same concept that was established in Minnesota.
What is amazing is the short time frame that took place from concept to implementation and then to full coverage within the USA. All started with a conversation in early 2010 and by the end of 2015 all states had coverage for inventors with limited means. The goal of assisting inventors with “good ideas” who had done their homework, learned about the patent system and were willing to put some “skin in the game” has now become reality.