The Ohio Patent Pro Bono Program was launched in response to the "America Invents Act", 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 in response to an Executive Action, which called for the USPTO to assist innovators by expanding the pro bono program to cover all 50 states.
The Program was the result of an active collaboration among the USPTO, The Cleveland Intellectual Property Law Association ("CIPLA") and the IP Venture Clinic at The Case Western Reserve University School of Law. While we have received a strong response from the members of the patent bar at large, we need law firm leadership to support volunteer participation.
In addition to galvanizing the legal community for individual volunteers & patent agents, the Pro Bono Network is asking firms to commit blocks of billable time to champion this growing program.
Join our pool of volunteer attorneys today!
We are pleased to have a roster of generous volunteer attorneys from firms and corporations from all across the state of Ohio!
Registering now as a volunteer will enable you to receive important program updates and news! You are under no obligation to take on a case once registered.
How do I register as a volunteer?
The Ohio Patent Pro Bono Program is looking for licensed patent attorneys in Ohio who are interested in donating their services to help under-resourced inventors file patent applications with the USPTO.
To register as an attorney volunteer, complete our Volunteer Registration Form. All referrals will be well vetted to ensure a reasonable level of client responsibility and potential patentability.
Attorney 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.
How do I sign up for a Pro Bono Case?
As an attorney volunteer, you may choose from the list of available cases which is updated regularly and can be found on the Available Patents Cases page of our website. If you see a case that interests you, please send an email to firstname.lastname@example.org or call our Client Coordinator 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.
Can my entire firm or corporation become involved?
Yes, many firms and corporations have already partnered with the Ohio Patent Pro Bono Program to implement this program as a part of their pro bono initiatives. The program offers firms and corporations the opportunity to commit blocks of billable hours to support this growing program. 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.
If would like to learn more about how your firm or corporation can be involved as a whole, please email [email protected] or call us at (440) 745-4145.
Do I receive recognition along with my firm/corporation for my/our contribution to pro bono service?
Yes. Throughout the year supporting entities (USPTO and CIPLA) partner with the Ohio Patent Pro Bono Program to publicly recognize participating firms, corporations and individuals for being active in the program. 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.
What happens once I "accept" a pro bono case and how does the engagement process work?
We Make it Easy for Volunteers!
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 Patent Pro Bono Program has prepared the form engagement letter, which is based on a form used by a model patent pro bono program.
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 Pro Bono 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 volunteer may disengage (using a form disengagement letter provided by the 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 Pro Bono client for as much of the process as possible.
What avenues of participation exist?
Avenues of participation are available for both corporate counsel as well as attorneys and patent agents from traditional firms which include the following options:
1. Brief Consultations
Volunteers can elect to be matched with an inventor to provide brief advice during single or on-going consultations while the inventor is awaiting placement with another volunteer for full pro bono representation. Program staff is available to help coordinate consultations which can be conducted over the phone, via videoconferencing or in-person at one of our partnering locations such as the Cleveland Public Library or Case Western Reserve University Sears Think[box]. Volunteers may work together when providing brief consultations.
Volunteers can provide mentoring to fellow volunteer attorneys such as junior associate attorneys handling a case or can receive mentoring from another volunteer while working on a pro bono case.
3. Question & Answer Email Consult Group
Volunteers can provide answers to specific questions from inventors awaiting placement through emails curated by Program staff.
4. Brief Advice Clinics
Volunteers can provide brief advice at one of our pro bono days or during one of our other program events.
5. Full Pro Bono Representation
Volunteers may be matched with an inventor to assist with the patent application process. In entering into an engagement agreement with an inventor, volunteers can determine the length of and scope of their representation whether it be through the filing of a provisional application, nonprovisional application or through to the issuance of the patent. The volunteer and inventor will review and sign a form pro bono engagement agreement provided by the Program which outlines the terms of the engagement. After representation ends, the inventor can return to the program to be matched with another volunteer if they are still in need of continued assistance.
Can I earn CLE credits?
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 [email protected] to apply for CLE credits by submitting this form- Application for CLE Credit Form 23.
What are the requirements for community inventors?
All referrals will be well vetted to ensure a reasonable level of client responsibility and potential patentability. 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.
Am I the client’s general counsel?
No, the Ohio Patent Pro Bono Program places patent cases solely for the preparation, filing and the prosecution of an application.
Does the program provide malpractice insurance for its attorney volunteers?
Yes, as of January 14th, 2019, the program now offers malpractice insurance to its qualifying volunteers.
Who is responsible to pay the fees associated with filing and maintaining a patent?
You are donating your time and the time of any paralegals or staff who assist with the Pro Bono Client. The Pro Bono Client is responsible for paying for all filing fees.
How is the Ohio Patent Pro Bono Program involved once I take on a Pro Bono Case?
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.
The Ohio Patent Pro Bono Program reaches out quarterly to you in order to obtain information and keep track of how cases are progressing. These quarterly outreach efforts are in the form of emails that 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.
Why should I volunteer my time with the Ohio Patent Pro Bono Program?
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.
What do I do when I complete my representation?
As an attorney volunteer, you will assist your Pro Bono 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), you 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 Pro Bono client for as much of the process as possible. The attorney volunteer may also need to file a Request for Withdrawal as Attorney or Agent and Change of Correspondence Address.