Volunteers Frequently Asked Questions
The Ohio Patent Pro Bono Program is looking for licensed patent attorneys or agents in Ohio who are interested in donating their services to help under-resourced inventors file patent applications with the USPTO.
To register as a volunteer, complete the Volunteer Registration Form. All referrals will be well vetted to ensure a reasonable level of client responsibility and potential patentability.
Volunteers are under no obligation to take on cases once registered but will be included in our volunteer pool. Also, an attorney volunteer does not have to work a case from start to finish of the patent application and prosecution process - though it is our hope that an attorney volunteer will work with his/her Ohio Patent Pro Bono Program client for as much of the process as possible.
Volunteers may choose from the list of available cases which is posted on our website on the Available Patent Cases page. If you see a case that interests you, please email email@example.com. or call our staff at (440) 745-4145 with the title of the case.
Additionally, we may reach out to you directly by email if we feel the case is a good fit with your area of patent expertise. If you can assist, you may accept the case simply by replying to the email. The Ohio Patent Pro Bono Program will only contact you for the areas of practice you indicated on the Volunteer Registration Form.
In order to make the process as streamlined as possible, the Ohio Patent Pro Bono Program, the Cleveland Intellectual Property Law Association and the USPTO have worked together to develop screening and tracking systems to identify client readiness and ensure that volunteers are connected only with serious inventors. The Ohio Patent Pro Bono Program functions as a referral service, handling applicant intake and file assignment to attorney volunteers.
We maintain case continuity - attorneys do not have to work the case from start to finish.
We will post the case list on the Available Patent Cases page of our website and encourage volunteer attorneys to check it periodically or when they have availability to take on a case. Cases are distributed to attorney volunteers based on the areas of focus and interest communicated by attorney volunteers to the Ohio Patent Pro Bono Program. When we have a case that is a good fit with your practice area, we will email the case Title and details to you for consideration. If an attorney volunteer is interested in a case, the attorney volunteer would:
• Perform a firm conflicts of interest check.
• Submit the proposed pro bono opportunity to his/her firm's Pro Bono Committee for review and approval (if applicable) and review this information sheet and the Ohio Patent Pro Bono Program engagement letter with his/her firm. The Ohio Pro Bono Program has prepared the form of engagement letter, which is based on a form used by a model patent pro bono program.
• Confirm that his/her volunteer work in connection with the proposed pro bono engagement will be covered by his/her firm's malpractice insurance policy. Our program does not provide malpractice insurance coverage for attorney volunteers.
With these administrative details handled, the engagement letter would be signed by the attorney volunteer and the applicant, the subject file would be provided by the Ohio Patent Pro Bono Program to the attorney volunteer for management and prosecution, and the applicant would be a pro bono client of the attorney volunteer's firm.
A volunteer will assist his/her Patent Pro Bono Program client with the filing of a nonprovisional patent application and/or the prosecution of a non-provisional patent application to allowance or final rejection. Once a filing is made (including, later in the process, an Office Action response), the attorney volunteer may disengage (using a form disengagement letter provided by the Ohio Patent Pro Bono Program) and transition the case to the Ohio Patent Pro Bono Program for attempted assignment to another attorney volunteer. In other words, an attorney volunteer does not have to work a case from start to finish of the patent application and prosecution process - though it is our hope that an attorney volunteer will work with his/her Patent Pro Bono Program client for as much of the process as possible.
The Ohio Patent Pro Bono Program is happy to facilitate communication with an inventor and offer assistance within our scope of influence until representation ceases. We maintain case continuity - attorneys do not have to work the case from start to finish. However, the Ohio Patent Pro Bono Program does not offer legal services outside of a pro bono referral. We assist with the engagement and disengagement procedures of pro bono cases by providing agreements. We may also assist the transition of the inventor out of the program by referring him/her to appropriate next-step resources.
The Ohio Patent Pro Bono Program reaches out quarterly to volunteer attorneys in order to obtain information on Pro Bono Cases that we use to keep track of how cases are progressing. These quarterly emails contain some brief questions for you to complete. Collection of this information is important because it allows us to gather the statistics we are required to report back to the USPTO to ensure the continuation of our program to assist under-resourced inventors.
No, the Ohio Patent Pro Bono Program places patents cases solely for the preparation, filing and prosectution of an application.
While we have received a strong positive response from the members of the patent bar at large, we need law firm leadership to pave the way for participation.
The Pro Bono Program is asking firms to commit blocks of billable hours to support this growing program. The network offers firms the opportunity to commit a block of time to their community. In addition to helping the local economy by providing pro bono services, participating firms have the potential to reap the benefits of this relationship, as patents are issued and new commercial potential grows across the state. Throughout the year, each of the collaborating entities (Pro Bono Program, USPTO, & CIPLA) will publicly recognize participating firms for being active in the program including listing the names of the firms or corporations on the USPTO’s website.
Avenues of participation are available for attorneys and patent agents at both corporations and traditional firms which include brief advice clinics, mentoring junior attorneys and full pro bono representation.
The program does not currently offer malpractice insurance to its volunteers, however, we are exploring options to incorporate it into our program. Attorneys & patent agents must practice under their own malpractice insurance.
Volunteers are donating their time and the time of any paralegals or staff who assist with the inventor. The inventor is responsible for paying all filing fees.
Yes, participating attorneys may earn up to six (6) CLE credits in biennium. One (1) credit is awarded per every six (6) hours of pro bono service contributed. Please email firstname.lastname@example.org or call our staff at (440) 745-4145 to apply for CLE credits.
Participating firms, coporations and individuals may earn recognition through publicity and awards generated from the Patent Pro Bono Program, USPTO and CIPLA. The USPTO features a list on their website of individual volunteer attorneys as well as entire firms and corporations who qualify to receive their Pro Bono Program Achievement Certificate. Find out more here.
As part of the intake process, the Ohio Patent Pro Bono Program confirms that applicants meet the requirements for program participation:
• Income Requirement: Applicants must not exceed an annual income of three times the federal poverty level on a household basis.
• Patent Education Requirement: Applicants must complete an on-line patent law training course provided by the USPTO.
• Application Subject Matter Requirement: Applicants must request assistance with a potentially patentable invention - as opposed to needing trademark or copyright counsel.
Pro bono service is a long-standing component of the legal profession. Your generosity can pay off on multiple levels.
By providing patent pro bono services to the local community, your firm can help fill the gap. Each successful case presents the potential for your firm to develop productive, new client relationships as ideas move their way toward market and generate new business.
The Ohio Patent Pro Bono Program provides opportunities to Ohio and to participating firms:
• Economic Impact: Opportunity to have a direct hand in improving the local economy.
• Give Back: Fulfill your professional obligation to the community and the legal industry.
• Save Time: Increase the value of your time; the Pro Bono Network vets all applicants and only forwards qualified candidates for engagement.
• We’ll Help: We maintain the life of each case, freeing your time for other work.
• Sweet Spot: Fulfills your volunteering obligation and CLE credit with projects in your wheelhouse.
At the completion of your representation, volunteers should contact our program to complete a Disengagement Agreement provided by the program. The volunteer attorney may also need to file a Request for Withdrawal as Attorney or Agent and Change of Correspondence Address.
Inventors Frequently Asked Questions
The purpose of the Patent Pro Bono Program is to match eligible inventors in Ohio with volunteer patent practitioners who donate their services to help file patent applications. Whether or not an inventor is ultimately matched with a volunteer attorney depends on a number of factors, including but not limited to the inventor’s income, the patentability of the invention, and the availability of volunteer attorneys. Unfortunately, we cannot assist all applicants.
Contact the Ohio Patent Pro Bono Program at (440) 745-4145 or email@example.com.
Prior to applying for pro bono services, you must have a good faith belief that your invention constitutes novel and non-obvious patentable subject matter. For more information on patent requirements please visit our Inventors page.
We can only accept Ohio residents whose annual household income falls within 300% of the Federal Poverty Level according to household size (using the U.S. Dept. of Health and Human Services federal poverty guidelines available here).
Income Qualification Examples (2018):
|# Persons in Family / Household||Poverty Guideline||Ohio Patent Pro Bono Qualification – no more than (3x Poverty Guideline)|
STEP ONE: Learn about the program by visiting the USPTO website and our Inventors page of this website.
STEP TWO: Take the "Basic Patent Training for Independent Inventors and Small Businesses" course, a 39 minute, 30-module informational video/certification program hosted by the USPTO. All applicants are required to complete this training before they receive assistance from the program. You must print out the certificate of completion you will receive at the end of the training and keep it for your records. We will ask for it later on in the application process.
STEP THREE: Fill out and submit a Patent Pro Bono Program application.
We will contact you about the next steps once we complete an initial review of your information and determine if you are eligible for assistance. Processing time may vary. If you meet the program’s eligibility requirements we will seek to connect with a local attorney or patent agent in our network. Whether or not an inventor is ultimately matched with a volunteer attorney depends on a number of factors, including but not limited to the inventor’s income, the patentability of the invention, and the availability of volunteer attorneys. We will do our best to place your case with a volunteer attorney; however, we cannot guarantee that an attorney will be available to accept your case.
Our volunteer patent practitioners assist Patent Pro Bono Program participants with filing patent applications with the United States Patent and Trademark Office. Although our attorneys do not charge for their work, all clients will still be responsible for paying filing fees and other possible expenses relating to your patent application.
Once a volunteer attorney has decided to accept your case and engage you as a client, the scope of representation will be discussed and memorialized in an engagement agreement.
In some cases, representations may be limited to a specific amount of time or phase of patent preparation or prosecution.
Yes, all information submitted and discussed is protected under attorney-client privilege and is confidential.
In the meantime, we encourage you to read the following information about how to protect your invention prior to filing a patent application.Avoiding Premature Public Disclosure of Inventions
This information should help you avoid making premature public disclosures about the details of your invention. A public disclosure may limit or preclude the patentability of your invention, especially in jurisdictions outside of the United States.
Although our attorneys do not charge for their work, program participants are responsible for paying all U.S. Patent and Trademark Office (USPTO) filing fees and other possible expenses relating to filing a patent application.
For example, the filing, search and examination fee due to the USPTO for a Non-Provisional Application (micro entity) is $400.
Below is a list of common government fees an inventor may need to pay over the lifetime of a patent. You should discuss the fees you may be required to pay with your volunteer attorney. The information contained below is for informational purposes only and is not necessarily comprehensive.
U.S. Patent & Trademark Office Government Fees for Micro-Entities
|Application Filing Fees||Fee|
|Application Examination Fees||Fee|
|Request for Continued Examination|
|• 1st Request||$325|
|• 2nd and Subsequent Requests||$475|
|Extensions of Time|
|Patent Issue Fees||Fee|
|Post-issuance Maintenance Fees||Fee|
*As of January 16, 2018.
No, the Ohio Patent Pro Bono Program currently only accepts applicants for patent preparation and prosecution referrals.