Upper Midwest Jazzed Up About Expansion of Patent Pro Bono Program


From Left to Right: Jenny McDowell, Representative Keith Ellison, Jay Erstling.

To the music of the award winning jazz group, the Mary Louise Knutson Trio, the Upper Midwest Inventor Assistance Program celebrated its expansion on April 20, 2015 at William Mitchell College of Law, in St. Paul, Minnesota. The expansion is part of the USPTO’s nationwide effort to establish and expand programs that will connect low income inventors with volunteer patent lawyers. Since 2011, Minnesota’s patent pro bono program, administered by the LegalCORPS Inventors Assistance Program, has provided services to inventors within the state of Minnesota. In partnership with William Mitchell, the newly-expanded program provides patent law pro bono assistance to inventors in four additional states: North Dakota, South Dakota, Wisconsin and Iowa.

The afternoon of events began with a luncheon where Congressman Tom Emmer (6th District MN) gave the keynote speech to members of the judiciary, IP professionals, pro bono community leaders, and USPTO representatives. Next, a colloquium on the importance of Women in IP highlighted the views of four respected IP lawyers from across the country: Lisa Dunner, Dunner Law PLLC and ABA IP Law Section Chair; Angela Grayson, Associate General Counsel, IP, Walmart Stores, Inc.; Doris Hines Johnson, Partner, Finnegan, Hendersen, Farabow, Garrett and Dunner; and Denise DeFranco, Partner, Finnegan, Hendersen, Farabow, Garrett and Dunner and AIPLA President-Elect. Amy Salmela, Partner at Patterson Thuente IP, moderated the panel.

After the panel discussion, Representative Keith Ellison (5th District MN) provided opening remarks for the pro bono launch event, emphasizing the need to help those of modest means as a way to bolster the local and national economy. Then, USPTO Pro Bono Coordinator Jennifer McDowell provided a brief history of the program and thoughts on how the programs will continue to succeed with the help of attorneys, corporations, and law firms committed to making a difference in their field of expertise. Andrew Byrnes, USPTO Chief of Staff, provided the keynote address, highlighting the USPTO’s quality efforts and the importance of pro bono service. In conjunction with World IP Day, the reception following the launch incorporated the theme of music, featuring many local inventions relating to music. The entire day celebrated the innovation, equality, and economic development.

When Section 32 of the Leahy-Smith America Invents Act became law in fall 2011, the USPTO began working with intellectual property law associations across the country to establish pro bono programs designed to assist financially under-resourced independent inventors and small businesses secure patent protection for their inventions. Minnesota was the first state to establish a program, and now joins the growing list of programs expanding to cover nearby states. The efforts of those programs, in conjunction with the USPTO, has been astounding: within the past ten months, the number of states now having access to a patent pro bono program has more than doubled. The USPTO is pleased to partner with programs such as LegalCORPS and William Mitchell College of Law to provide inventors of modest means the opportunity to utilize highly specialized, competent patent counsel, for free, in the filing and prosecution of their patent applications.



Rep. Emmer greeted by James Patterson, Partner Patterson Thuente IP.



Andrew Byrnes, USPTO Chief of Staff.



Women In IP Panel Discussion.



Music by the Mary Louise Knutson Trio.


The Author

Jennifer McDowell & Jay Erstling

Jennifer McDowell & Jay Erstling  

Jennifer McDowell is the USPTO’s Pro Bono Coordinator, a position located within the Office of the Under Secretary and Director. Prior to leading the Pro Bono program, Ms. McDowell was an associate counsel for the office of the General Counsel and was responsible for the legal clearance of patent and trademark rules for the agency. Her work includes dozens of rules promulgated under the AIA, the Patent Law Treaty and the Hague Agreement. In addition, Ms. McDowell has litigated and provided legal advice to USPTO managers on a wide variety of employment law matters for over a decade. Ms. McDowell previously served as Special Project Manager in the Office of the Under Secretary and Director during the transition to the Obama administration.

Jay Erstling is currently a professor at William Mitchell College of Law's Intellectual Property Institute and Of Counsel to Patterson Thuente IP. Professor Erstling teaches courses on comparative and international patent law and serving as director of its IP legal clinic--one of just 16 clinics invited to participate in the USPTO's Law School Clinical Certification Pilot.

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Discuss this

There are currently 10 Comments comments.

  1. angry dude May 2, 2015 8:43 pm

    Guys, are you kidding me ?

    Who needs your help getting useless patents ?

    I need help in restoring injunctions to what it was before EBay

    This is what every independent inventor should be asking for: injunctions (at least for willfully infringed patents)

  2. Curious May 3, 2015 1:10 am

    Not my cup of tea. There may be a place in lawyer-heaven for patent attorneys who do pro bono patent work — I can assuredly say that I will never visit that place.

  3. Benny May 3, 2015 5:26 am

    Curious – Lawyer-heaven ? Couldn’t find it on the map anywhere.

  4. Anon May 3, 2015 8:02 am

    The best pro bono patent work a patent attorney can do is not directed to any one single client, but instead is directed to reaching out to Congress and making sure that any patent laws contemplated strengthen rather than weaken patent rights (and the enforcement of patent rights made easier, not more difficult and expensive).

    I too hesitate to endorse glorifying an “exception” based program while the “rules” are headed in the wrong direction.

    Benny, while you may think a general derision of attorneys is “cute,” such rhetoric is not helpful.

  5. Curious May 4, 2015 1:28 am

    I too hesitate to endorse glorifying an “exception” based program while the “rules” are headed in the wrong direction.
    It is hard enough for a small-time inventor with modest means to enforce his/her patent rights. If the inventor doesn’t even have enough money to pay his/her patent attorney, then there really is little hope to have the patent be worth more than a “vanity” patent.

    I am sure there is a small (maybe even large?) subset of people at the USPTO that truly want to help out inventors. However, with the exception of Kappos (to some extent), the leaders at the USPTO have been all too willing to find ways to weaken the patent rights.

  6. Anon May 4, 2015 7:58 am

    Excellent point Curious – what will the inventor do with the patent – if one is obtained – should very well be established at the onset.

    Vanity patents in and of themselves are “nice,” but if there is no thinking of enforcement, then any patent strategy is deficient from the get-go.

  7. Curious May 4, 2015 9:41 pm

    what will the inventor do with the patent – if one is obtained – should very well be established at the onset
    I agree. Getting a patent is just one milestone along the path of protecting one’s intellectual property. Driving me halfway across the Sahara desert and then dropping me off with parting comments of “we got you halfway there, the rest is up to you” just gets my hopes up unnecessarily because there is no way I’m going to cover the other half without serious help.

    Something else to consider — in a normal patent prosecution situation, if there is little hope for a patent you can give the client the whole “it’ll cost you X much to proceed with little hope of success, how do you want to proceed?” talk. However, when it costs an inventor nothing to continue to fight, why would they ever want to abandon? Also, if you’ve taken on the case pro bono, do you really want to be known as the guy that tried to fire (i.e., disengage from) his pro bono client?

  8. Anon May 5, 2015 7:20 am


    A related point to the difficulty of firing a pro bono client, and in line with the time (and money) drain of such a client, is the observation that the front end of patent work is the most expensive for a law firm – lot’s of people want to have the “law suit” end, where billables can be had readily (albeit decreasingly so). But the front side is typically performed by the boutiques. This remains so because the cost dynamics are just not that alluring to the big multi-disciplines law firms. It is much more difficult (read that as lower hanging fruit is available elsewhere) to maintain and make thrive the front end of the process (especially if no steady stream back end is there).

    A bit of “legal reality” that is often said in whispers, if at all.

  9. angry dude May 5, 2015 10:35 am


    patent prosecution and patent litigation are like yin and yang: if one goes the other ones goes too. There should be a healthy balance between the two.
    But if futher patent “reform” is enacted then litigation side will dry out quickly (it already did), followed by the prosecution side.
    No one wants “vanity” patents

  10. Anon May 5, 2015 11:09 am

    angry dude,

    We will have to agree to disagree, as yin and yang do not meet more often than they to meet.

    Yes, there “should be” a healthy balance – but as I indicate, that is just not the legal reality of where the flow of money (to and through) the law machine goes.

    Finally, I think that “drying out” would be a disaster, and this follows from the propaganda that any lawsuit somehow “must be” a bad thing – so often the message from the Infringer’s camp, so thoroughly the drumbeat of propaganda.

    To paraphrase, “Starve the fuel of interest and diminish the fire of genius.”

    Starving can be accomplished in many ways.