USPTO Patent Pro Bono Program Establishes Texas Platform


The Texas Accountants and Attorneys for the Arts (TALA) has recently assumed responsibility for the Texas effort in partnering with the USPTO to provide pro bono services to under-resourced inventors. Under the guidance of the USPTO, the pro bono assistance program will be transitioning to TALA. TALA is very pleased that Kelly Jackson has agreed to stay on as leader of the pro bono office and to assist in the move of the operations to TALA. The arrangements are currently pending.

The USPTO Pro Bono Patent Program is for inventors and small businesses who have limited resources and need help applying for a patent on an invention. If eligible, applicants may receive pro bono (“for free”) attorney representation through the Nationwide Pro Bono Program. In Texas, the TALA effort makes the Nationwide Pro Bono Program accessible to inventors across the state.

The Pro Bono Program is an outcome of the Leahy-Smith America Invents Act (AIA) which encouraged the USPTO to “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.” It is one the Obama Administration’s seven Executive Actions for the USPTO to assist innovators by expanding the pro bono program to cover all 50 states.

The eligibility requirements vary for each program. In general, there are three basic requirements: (1) the inventor must have less than a maximum household income; (2) the inventor must have knowledge of the patent system; and (3) the inventor must have an invention – not just an idea!

The inventor must earn less than the regional program’s income limitation. Determination of financial eligibility is region dependent, but is usually 300% of federal poverty levels. Interested applicants are encouraged to check the Texas regional program’s web site to determine your income limitation. For example, a single person could have an income of up to $35,310 (3 times the current single person poverty level of $11,770).

There are two ways to demonstrate knowledge of the patent system. First, an inventor can demonstrate knowledge by having a current provisional or nonprovisional patent application on file with the USPTO. Some regional programs require that a provisional patent application be filed as a condition of requesting assistance. Otherwise, an inventor may demonstrate knowledge by successfully complete the on-line Certificate Training Course. Also, many regional pro bono programs require successful completion of the certificate training to be considered for the program.

Before an applicant may obtain a pro bono attorney, an actual invention for which patent protection is sought is needed; not merely an idea. To demonstrate an invention, the inventor should be able to describe the invention so that someone else could actually make and use the invention. Inventors, however, are cautioned to not publicly disclose your invention prior to filing a patent application or at least a provisional application for a patent. To do so could make it prior art against itself, resulting in an inability to secure a patent.

There are two ways to apply for pro bono assistance. First, you may apply directly with the regional Patent Pro Bono Program in the state where you live. You may access the regional program’s website by clicking on the map. Alternatively, you may apply through an online portal known as the National Clearinghouse, which is operated by the Federal Circuit Bar Association. The National Clearinghouse portal will require you to provide contact information and answer a few questions. It also will require you to provide basic information about your invention, including a brief description, to help in the referral process. Should your application pass the first level of screening at the National Clearinghouse, it will be forwarded to the appropriate regional program. All following correspondence will generally come from the regional Pro Bono Program. Visit the Federal Circuit Bar Association’s National Clearinghouse to apply for pro bono assistance.

In Texas, with TALA incorporating the Pro Bono Program into its offerings, the responsibilities of the Pro Bono Steering Group came to an end in December 2015. With the leadership of former Texas Supreme Court Justice, Craig Enoch, and Patent Attorney and Founder of Hulsey, Hunt & Parks, PC, Bill Hulsey, a critical first step of the effort comes to a close. At last report, Texas had nearly 40 active matters placed with 24 volunteer attorneys. Presently, the Texas program has a very short waiting list is considered a very successful program by those in the know at the USPTO.

To learn more about the USPTO Pro Bono Patent Program, watch the following YouTube video: