USPTO Patent Pro Bono Program Chicago Hub Now Available

By Mary Anne Smith
March 8, 2017

Pro bonoIn late 2014, IPWatchdog interviewed Jennifer McDowell, who was coordinator of the USPTO’s Pro Bono Patent Program. Jenny described the Pro Bono Program, which was set up under the America Invents Act and matches low-income inventors with pro bono patent attorneys. The PTO was tasked with setting up Patent Hubs to provide coverage for the program in all 50 states. The goal was to have that coverage by the end of 2015.

Twenty hubs were set up around the country, some covering one state, some covering several states, one covering eight states. Some hubs are run by local Lawyers for the Creative Arts programs, others by law schools, others by state bar associations. The last hub put in place was the Chicago-Kent Patent Hub, launched in October 2015 by Illinois Institute of Technology’s Chicago-Kent College of Law and covering the state of Illinois.

The Chicago-Kent Patent Hub follows the model described by Jenny McDowell in 2014: An inventor accepted into the program must have income generally below 300% of poverty level; must demonstrate some knowledge of the patent system, usually by having filed a provisional patent or by watching the USPTO training video; and must be able to describe his or her invention so that someone knowledgeable in the field could make it. This is the model generally followed by all 20 of the Hubs.

A qualified inventor is matched with a patent attorney who provides legal services without charging attorney fees and agrees to stay with the inventor until either a patent is issued or there is a final rejection from the PTO. The inventor must pay all filing fees and all costs, including the cost of drawings and prototypes. In many cases, resources are available for obtaining drawings and prototypes at reduced cost.

As the director of the Chicago-Kent Patent Hub, I meet with each applicant to determine his or her qualification for the program. Each inventor is screened carefully to ensure he or she meets all the qualifications and will be able to work successfully with a patent attorney. A preliminary prior art search is done for the invention. If there is doubt, a patent attorney is consulted, without a request to take on the inventor as a client.

After the review, I prepare a report on the interview and invention, and contacts a volunteer attorney with a background in the field of the invention to see if he or she is interested in working with that inventor. The attorney reviews the interview report and the description of the invention; if there is interest, his or her firm does a conflicts check. If the attorney accepts the inventor, the match is made and the inventor is advised to contact the attorney.

The attorney and client sign an engagement letter, and the Hub and inventor sign a referral agreement, setting out the inventor’s obligations in order to continue in the program. Some of those obligations include an agreement to cooperate with the attorney, to meet deadlines, to respond promptly to requests for information, and to inform the Hub if there is a significant change in income.

The attorney is offered the opportunity to have a Chicago-Kent student work with him or her and the inventor at no cost to the firm. Chicago-Kent IP students are very well qualified: Most have undergraduate or advanced degrees in engineering or science, and those available to work in the program have taken at least one patent course in law school. Some firms prefer to use the program as an opportunity to provide experience to new associates, and some are happy to work with law students.

From its beginning in late 2015 to the end of 2016, the Chicago-Kent Patent Hub has received 220 applications; 146 applicants have accepted the invitation to an interview; 66 have been approved for placement; and 51 have been placed with patent attorneys. Students are working with attorneys on 15 of those cases. To date, 30 non-provisional patent applications have been filed for these inventors, and 15 provisional applications and three design applications have also been filed. 1331 hours of attorney time have been contributed to the program by patent attorneys.

Chicago-area attorneys have been very responsive to the program: 57 attorneys in 22 law firms are available to take inventors. Nationally, there has been a great response to the program, with many hubs having backlogs of inventors waiting to be placed with patent attorneys. The Chicago-Kent Hub has been able to place all qualified inventors with attorneys and has no backlog. Attorneys are asked about their experiences with the inventors, and almost all express a high degree of satisfaction with the experience. I believe a careful screening contributes to attorney satisfaction and willingness to work with another inventor. Students also have expressed great satisfaction in working with the attorneys and in being able to assist in drafting patent applications.

Inventors learn of the Hub from the USPTO website, from internet searches, from local inventor organizations, from university tech transfer offices, from the Lawyers for the Creative Arts and other programs working with inventors, and from word of mouth. Some are repeat users: One inventor has had three inventions placed with three different patent attorneys.

Because the Chicago-Kent Patent Hub is part of a law school that is part of a university, there are additional resources available to inventors. There is a center for entrepreneurship, which provides services to start-ups and existing small businesses, such as help with business plans and advice on advice on hiring employees; referral to resources for drawings, prototypes and manufacturing; and links to other resources. Engineering and science students are applicants to the program, and campus facilities are available for programs for inventors and attorneys.

While the program is still too new to have had any patents issued, the Hub has had a number of success stories. Here are two of them.

  • An inventor who is an avid motorcycle rider visited the Patent Hub with an invention for a plastic gas can that can be collapsed and easily carried on a motorcycle or automobile. As a first-time inventor, he wasn’t sure how to protect his invention before proceeding to manufacture. Working with a patent attorney, the inventor was able to submit a non-provisional patent application and is awaiting the first office action.
  • A group of business and science graduate students from Illinois Institute of Technology won a National Institutes of Health (NIH) competition to license a compound developed at NIH for possible use in treatment of neurodegenerative diseases. The entrepreneurs’ goal was to research uses of the compound in MS and ALS and other diseases. The group came to the Chicago-Kent Patent Hub seeking possible patent protection for the compound and in licensing it from the NIH before beginning research. The matched patent attorney initially reviewed the licensing terms and helped the entrepreneurs negotiate the license agreement. The entrepreneurs have since raised about $350,000 for future studies. The group is no longer eligible for pro bono services. We expect they will continue with the patent attorney working on a fee basis.

The Chicago-Kent Patent Hub has had remarkable success over its eighteen months of operation and appears to be typical of the hubs around the country. It is providing a much-needed resource for low-income inventors and is doing exactly what was anticipated by the direction of the America Invents Act. There is a high level of satisfaction among inventors and attorneys. It is providing an opportunity to patent attorneys for pro bono work, something that hasn’t been available to them to such an extent before. And in Chicago-Kent’s case, it is providing an opportunity for law students to work with inventors and patent attorneys in a new way.

Inventors and attorneys interested in working with the Chicago-Kent Patent Hub can find more information at www.kentlaw.iit.edu/patentprobono.

 

The Author

Mary Anne Smith

Mary Anne Smith is Director of the Chicago-Kent Patent Hub, which is sponsored by Illinois Institute of Technology’s Chicago-Kent College of Law. She retired in 2012 as vice president and general counsel of Illinois Institute of Technology, after 35 years representing the university as its primary attorney. Mary Anne has been a volunteer attorney for Chicago Volunteer Legal Services Foundation since 1978, and has chaired a CVLS law clinic on the south side of Chicago since 1988.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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There are currently 1 Comment comments.

  1. angry dude March 8, 2017 9:43 am

    Seriously ???

    How about pro bono IPR and PTAB legal representation ?

    Sign me up for those