Uncle Sam Wants You! a Call to Pro Bono Service for Patent Practitioners

• Publication year: 2014
• Author: Daniel Ovanezian

Uncle Sam Wants You! A Call to Pro Bono Service for Patent Practitioners

Daniel Ovanezian

Lowenstein Sandler LLP

Benjamin A. Kimes

Lowenstein Sandler LLP

"Without question, my greatest satisfactions in life, apart from my family, have come from the services I have rendered to individuals and families and, on a larger scale, to my community. They have not come from the financial successes I fortunately have been able to enjoy, but from knowing that my energies and possible creativity have been of benefit to others."

— Alan V. Lowenstein

To all patent attorneys out there who have stayed on the sidelines and watched other attorneys perform pro bono work because you felt uncomfortable volunteering in areas outside your expertise and knowledge, we have news for you. Patent pro bono opportunities have arrived in California and we are calling upon you to come join us in service to the cause.

A provision in the America Invents Act (AIA) mandates that the United States Patent and Trademark Office (USPTO) "work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses."¹ The practical application of the AIA's mandate to establish patent pro bono programs across the country has been spearheaded by John Calvert, Senior Advisor of the Office of Innovation Development at the USPTO, who also wrote the above provision for the AIA. Initially, a regional pro bono pilot program was set up in Minnesota in 2011. Then, in 2012, three additional programs were established in Colorado, Washington, D.C and California. Regional patent pro bono programs have since been implemented in an additional sixteen states.² An original goal was to have the entire country covered by regional patent pro bono programs by the end of June 2014.³ The USPTO now anticipates that all 50 states will have a patent pro bono program by the end of 2015.⁴

Each of the regional patent pro bono programs operates in a slightly different way. However, each program performs the same basic function of matching low-income inventors with patent attorneys who will counsel the low-income inventors and assist them in the patent process. Common pro bono services provided by patent attorneys paired with low-income inventors include helping to identify potentially patentable subject matter, drafting and filing patent applications, and prosecuting patent applications. As with other pro bono legal work, all attorney fees are waived for the regional patent pro bono programs. However, inventors are required to pay any fees charged by the USPTO and also a small administration fee to the patent pro bono regional administration agency.

[Page 24]

With California being the most populous of the states and having a thriving technology sector, a large percentage of the patent applications filed with the USPTO originate from California.⁵ Accordingly, it is no surprise that California was considered to be an ideal state for early expansion of a patent pro bono program. Additionally, a large percentage of the pro se applicants for patent applications originate from California. The California Inventors Assistance Program (CIAP), the regional patent pro bono program for California, had an initial public launch in October of 2012 and is now the largest and most active regional patent pro bono program in the US. The USPTO selected California Lawyers for The Arts (CLA) to be the statewide administrator for CIAP because CLA is at present one of only two entities certified by the State Bar of California to provide lawyer referral services throughout the entire State of California. Additionally...