June 26, 2022

Volume XII, Number 177


June 24, 2022

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Supporting USPTO Pro Bono Programs

The USPTO first established a pro bono program to help “financially under-resourced inventors and small businesses” pursue patent protection for their inventions under the America Invents Act (AIA). The USPTO recently expanded its pro bono program to encompass ex parte appeals that may be necessary to overcome examiner rejections. The USPTO just announced its 2021 Patent Pro Bono Achievement Certificates awarded to individuals and law firms who “volunteered significant time and effort.”

Patent Pro Bono Program

The USPTO Patent Pro Bono program is operated through a “network of independently operated regional programs that match volunteer patent professionals with financially under-resourced inventors and small businesses for the purpose of securing patent protection.” The program for the D.C.-area is run by the Federal Circuit Bar Association (FCBA).

There are three main requirements for applicants:

  • Inventors must show that they understand the patent process and what they can do with a patent once received. (The USPTO created a training module for this purpose.)

  • Applicants must meet the financial need qualifications. (Typically 300% of the Federal poverty guidelines.)

  • Inventors must be able to describe their invention (e.g., in a level of detail that would be enabling).

Attorneys interested in volunteering for the FCBA regional program can complete a simple application form.

PTAB Pro Bono Program

The USPTO PTAB Pro Bono program is operated by the PTAB Bar Association which acts as “a national clearinghouse to connect volunteer patent practitioners with eligible inventors seeking legal assistance with ex parte appeals before the Board.” The USPTO intends that the program eventually will expand to include AIA trials.

There are five main requirements for applicants for PTAB pro bono assistance:

  • Inventors must demonstrate that they are domiciled in the United States.

  • Inventors must have a gross household income less than three times the federal poverty guidelines.

  • Micro Entity status must be established in the patent application at issue.

  • The application for pro bono assistance must be filed within one month from the date of the Office Action to be appealed from.

  • Applicants must have viewed the USPTO’s training videos about the PTAB Pro Bono Program and ex parte appeal process.

Access to pro bono representation is limited by the availability of volunteer practitioners, so if you are a patent practitioner with ex parte appeals experience and interested in volunteering, you can complete an online volunteer application form.

TTAB Pro Bono Program

While outside my wheelhouse, the USPTO also has a Trademark Trial and Appeal Board Pro Bono Program, operated by the International Trademark Association (INTA).

Commitment to Innovation and Inclusivity

The USPTO’s pro bono programs reflect the agency’s commitment to innovation and inclusivity. According to the USPTO’s 2021 statistics, “of the applicants who responded to a survey of those who have utilized the pro bono program, 30% identified as African American or Black; 14% as Hispanic; 5.6% as Asian or Pacific Islander; and 1.5% as Native American,” and 41% identified as women.

New USPTO Director Kathi Vidal already has expressed her support for these programs:

"Fostering access to our innovation ecosystem is critical to inclusive innovation and to bringing that innovation to impact for the good of all Americans . . . Through efforts [of the volunteers], we can create a system that will incentivize all Americans to innovate with the hope and dream that they can bring those innovations to impact, bettering their lives and the lives of all Americans."

© 2022 Foley & Lardner LLPNational Law Review, Volume XII, Number 136

About this Author

Courtenay C. Brinckerhoff, intellectual property  law attorney, Foley & Lardner  Law Firm

Courtenay Brinckerhoff is a partner and intellectual property lawyer with Foley & Lardner LLP. Ms. Brinckerhoff’s practice focuses on client counseling in all aspects of obtaining, licensing and enforcing patents and conducting freedom-to-operate and due diligence investigations. She is chair of the firm’s IP Law and Practice committee, immediate past vice chair of the firm’s Chemical, Biotechnology & Pharmaceutical Practice and a member of the firm's Patent Trials group, Appellate Practice and Life Sciences Industry Team. She also is involved with Foley’s...