Guidelines

Potential Pro Bono Patent Program

St. Louis, MO

Overview

Section 32 of the Leahy-Smith America Invents Act provides that the USPTO director shall “work with and support intellectual property law associations…in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.” In February 2014, President Barack Obama issued Executive Action 7 calling to increase the existing pro bono patent program to all 50 states by the end of 2014.

As a result, the USPTO has a mandate to establish pro bono patent programs in every state in the country by December 31, 2014. Such programs must be run out of 501(c)(3) organizations. St. Louis’s program and the greater five state region (Missouri, Arkansas, Oklahoma, Kansas and Nebraska) will be overseen by the nonprofit Gateway Venture Mentoring Service.

Geographic Scope:

The USPTO, for economic feasibility issues, would like the program to be administered in St. Louis but also assist those in nearby states (Arkansas, Nebraska, Kansas, and Oklahoma).

Eligibility:

To qualify for USPTO pro bono patent programs, the following requirements must be met:

  • One must earn no more than 300% of federal poverty levels (although this is only a general guideline, as requirements are region specific).
  • There is no asset restriction, although many programs have established some sort of liquid asset threshold to avoid assisting entrepreneurs who can afford to pay an attorney to draft a patent application.
  • An applicant must also demonstrate: (1) knowledge of the patent system and (2) have an actual invention (not just an idea).
  • Knowledge of the patent system. This may, depending on the region, be demonstrated by either
  • Actual invention. To demonstrate an invention, an inventor should be able to describe the invention so that someone else could actually make and use the invention.

Intake Screening:

Those seeking pro bono patent assistance must clear an intake process.

  • Gateway Venture Mentoring Service will ensure the individual qualifies based on the above eligibility requirements
  • Washington University’s Entrepreneurship and Intellectual Property Clinic would meet with clients to review an invention disclosure for their proposed invention.  They also would review inventorship and ownership issues to ensure the client is entitled to receive a patent.  They also would investigate potential loss of rights issues concerning public use, description in a printed publication, and actual or attempted commercialization.  Once they have confirmed a viable potential patent they will conduct a patent search for the closest relevant prior art and draft an opinion on the scope of patent protection that may be available for the proposed invention.  A favorable review would be required before allowing a client to access the pro bono legal services of a pro bono patent program to draft and file a patent application.

Process timeline:

  • Making it through both steps in the process (for those who qualify) is estimated to take 15 – 30 business days depending on program volume and workload.

Placement with a pro bono attorney:

Entrepreneurs that pass the eligibility and intake screening would then be referred to a pro bono attorney or a list of attorneys with the relevant interest and expertise. GatewayVMS would not accept this entrepreneur as a client, they would merely function as a referral source/matchmaker.

The law firm or in-house counsel department would then assist clients according to their respective internal pro bono representation policies. We generally anticipate that the firms and in-house counsel departments will not enter powers of attorney on behalf of clients and that the clients themselves would be responsible for completing the paperwork and paying the filing fees. To that end, the referring agency would ideally also publish a short “instruction manual” on how to use the USPTO electronic filing system (PAIR) to help indigent inventors file their applications. The nonprofit placement agency will provide a “model” engagement letter for pro bono clients to clearly set forth the limited scope of the engagement and protect the firms and in-house counsel departments.