Program Qualifications

Solo Inventors who …
  • have a total combined household income of less than 300% of the poverty guidelines; and
  • are not currently under an obligation to assign the rights to the invention.
Non-profits that …
  • have 4 or fewer inventors who are under an obligation to assign the rights to the organization;
  • have 501(c)(3) status;
  • have budgets of less than $1 million per year;
  • are not research institutions or institutions of higher learning; and
  • are not currently under any obligation to assign the rights to the invention to another entity.
Small businesses/Inventor groups that …
  • have 4 or fewer inventors, where all inventors have current household incomes of less than 300% of the poverty guidelines;
  • if already formed, had a total gross income of less than $150,000 in the preceding calendar year;
  • expect a total gross income of less than $150,000 in the current calendar year;
  • are not currently under any obligation to assign the rights to the invention to another entity.
  • Under most circumstances, all inventors should already be under an obligation to assign rights to the invention to the “business,” though we will consider the circumstances of each case, individually.
Additionally, placement with a volunteer patent agent/attorney remains within the sole discretion of the program administrator.

Steps to Apply:

Each step is important, and inventors who bypass any step will not be matched with an agent or attorney.

1. Basic Requirements for Invention

Prior to applying for pro bono services, you must have a good faith belief that your invention constitutes novel and non-obvious patentable subject matter that has been reduced to practice.

Patentable Subject Matter
  • Ornamental Designs
  • Asexually Reproduced Plants
  • Utility Inventions, such as a:
    • Process
    • Machine
    • Article of Manufacture
    • Composition of Matter
    • Or an improvement of one of the above

Non-obviousness

If the differences between your invention or improvement and another patented invention would be obvious to one skilled in the art, you cannot receive patent protection.  Some people call this the “inventive step” because this requirement prevents the issuance of patents for normal development or expansion, and rewards those who create and innovate within the field.

Novelty
  • The invention or improvement must not be known or used by others anywhere in the world before the applicant invented it.
  • The invention or improvement must not be patented or sufficiently described in any printed publication before the applicant invented it.
  • The invention or improvement must not be patented or sufficiently described in a printed publication in any country more than 1 year prior to filing the U.S. patent application.
  • The invention or improvement must not be in public use or on sale in the U.S. more than one year prior to filing the U.S. patent application.

Reduced to Practice

Patent protection does not extend to vague concepts or ideas. The actual invention must be reduced to practiceeither by creating working prototype, or by describing the invention in sufficient detail such that a person with ordinary skill in the relevant field could create a working prototype.

Conception is the touchstone of inventorship, the completion of the mental part of invention. *** An idea is definite and permanent when the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan he hopes to pursue. The conception analysis necessarily turns on the inventor’s ability to describe his invention with particularity. Until he can do so, he cannot prove possession of the complete mental picture of the invention.Burroughs Wellcome Co. v. Barr Laboratories Inc., 40 F.3d 1223, 1227-1228 (Fed. Cir. 1994)

 


2. Patent Training

Prior to applying for pro bono services, each inventor must participate in an approved patent training seminar or demonstrate he/she has been a named inventor on another patent.
Where can I get the necessary training?

Inventors may participate in the USPTO’s online patent training module, print out (or take a picture of) the final completion certificate, and email it in.


Who must complete training?

ALL inventors who are going to be listed on the patent must either:

  1. already be listed on another patent or pending application;
  2. attend an approved training seminar; or
  3. complete the USPTO online training module.

So, experienced patentees are exempt, but everybody else must complete the training.

 


3. Prior Art Search

Prior to attending a pro bono intake, you must conduct your own prior art search and find a reasonable number of close references. You must bring approximately 3 to 10 of the closest references to your intake meeting (or send us some references ahead of scheduling the meeting, upon request).

This is a mandatory requirement for this program. Take your prior art search seriously. There is always some prior art out there, and we will ask you how you conducted your search.


What is Prior Art?

“Prior Art” encompasses all existing information, knowledge, and references existing anywhere in the world prior to filing a patent. Of course, not all prior art matters. When patent agents and attorneys talk about “prior art,” they are referring to the following, in relation to your particular invention:

  • Prior Patents (U.S. or Foreign),
  • Published Articles,
  • Public Demonstrations, and
  • Other Public Disclosures.
Why are Prior Art references important?

Under the Patent Law, “[o]n taking up an application for examination . . . the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention.” Essentially, if your invention is disclosed anywhere in the prior art, it is not patentable.


How do I search for Prior Art?

A great place to start is to look through existing patents. You may do so on the USPTO’s website, the European Patent Office’s website, any one of several paid subscription services, or by using Google Patents. A well-done search should reveal similar inventions, including those inventions upon which your own invention likely relies. More importantly, the prior art search should help educate you, as the inventor, as to the current state of your particular field.

European? Why do I need to search that?

The USPTO considers all prior art, and not just applications, patents and other descriptions from the United States.  Many companies around the world file patents with the EPO, and many of these are in English, or translated into English.  We recommend searching through applications and patents separately.

Is searching really that simple?

Not really. Companies usually have experienced attorneys run prior art searches using sophisticated software. However, your basic search should help inform you if your invention already exists, and will aid in helping you determine the bounds of your invention!

How can I get help?

Luckily for us here in Georgia, the USPTO has a resource center located on the campus of Georgia Tech! The Patent and Trademark Resource Center can teach you how to do an effective and efficient patent search. The library website has numerous tutorials, and the coordinator is available for personal consultation Monday through Friday, on an appointment basis. You may set up an appointment by e-mailing patentscoordinator@library.gatech.edu or calling 404-894-4500.
The Georgia PATENTS program and GLA are not directly affiliated with the Patent & Trademark Resource Center, so if you are interested in consultation with the center, you must contact the center directly.

Why 3 to 10 references?

If you have found less than 3 references, you likely are not searching effectively. If you find more than 10, you are likely not searching efficiently. Too few references suggest you have not truly explored the prior art. Too many means that you do not necessarily understand the bounds of your invention, or your invention is likely already a part of the prior art.

What about commercial searches?

You may utilize the assistance of a commercial search company, but the results must be less than 3 months old, and we will need to see a copy of the contract with the search company to ensure you have not disclosed or assigned rights in the patent.


4. Submit Application

Application:

Before starting your application, please make sure you:

  • Have completed all of the previous steps.
  • Have the name and e-mail address of each inventor.
  • Collect financial information about each inventor and, if applicable, your business or non-profit.
  • Collect basic information about your invention.
  • Have information on previous patents/applications filed by each inventor.

Once you are ready to submit an application, please complete either the Solo Inventor Application (1 inventor) or the Small Business/Non-Profit Application (2 or more inventors).

What happens next?

Once you complete an application form, our staff will review the form and contact you within a reasonable period of time to ask follow-up questions and/or schedule an intake appointment.

What is a reasonable period of time?

We usually attempt to contact applicants within about a week. However, during the following periods, you should expect significant delays:

  • Christmas to New Years’
  • Mid March
  • Late April to Early May
  • Early August to Late August
  • Late November to Mid December

During these periods, our office is normally undergoing significant staffing changes, coinciding with the end of the law school semesters or holidays. We ask that you exercise patience if you apply directly before or during any of these periods.