The purpose of the Patent Pro Bono Program is to match eligible inventors in Ohio with volunteer attorneys 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. Inventors remain responsible for paying all applicable fees owed to the United States Patent & Trademark Office during the prosecution process, and sometimes drafting fees (at cost) necessitated by complex inventions or designs.

If you are an Ohio resident with a promising invention who wants to apply for legal assistance through the Patent Pro Bono Program, please take the following steps:

STEP ONE: Learn more about the program by visiting the USPTO website and carefully review the program and patent application guidelines provided below. An overview of the patent application process can be found on the USPTO website here .

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 save a digital copy of 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 Inventor Application.

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 that has been reduced to practice.

What does "novel" mean?

• The invention or improvement must not be known or used by others anywhere in the world before the applicant invented it.

• The invention or improvement must not be patented or sufficiently described in any printed publication before the applicant invented it.

• The invention or improvement must not be patented or sufficiently described in a printed publication in any country more than 1 year prior to filing the U.S. patent application.

• The invention or improvement must not be in public use or on sale in the U.S. more than 1 year prior to filing the U.S. patent application.

What does "non-obvious" mean?

The differences between your invention or improvement and another patented invention must not be obvious to a person of ordinary skill in the relevant field. Essentially, this requirement prevents the issuance of patents for normal development or expansion and rewards those who create and innovate within the field. This is also referred to as "the inventive step."

Patentable Subject Matter

• Ornamental Designs

• Asexually Reproduced Plants

• Processes

• Machine

• Article of Manufacture

• Composition of Matter

• Improvement of one of the above

What does "reduce to practice" mean?

"Conception is the touchstone of inventorship, the completion of the mental part of invention." Hybritech Inc. v. Monoclonal Antibodies, Inc. (quoting Robinson On Patents). Patent protection does not extend to vague concepts or ideas; the concept or invention must be "reduced to practice" before you can apply for a patent. Reduction to practice can occur in 2 ways:

1. By creating a working prototype; or

2. By describing the invention in sufficient detail such that a person with ordinary skill in the relevant field could create a working prototype.

An idea is definite and permanent when the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan he hopes to pursue. The conception analysis necessarily turns on the inventor’s ability to describe his invention with particularity. Until he can do so, he cannot prove possession of the complete mental picture of the invention. Burroughs Wellcome Co. v. Barr Laboratories Inc.

Course Details

Prior to submitting the application for assistance (below), the inventor must complete the Basic Patent Training for Independent Inventors and Small Businesses, 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.

Prior to submitting an application, we advise that inventors conduct a prior art search.

What is Prior Art?

“Prior Art” encompasses all existing information, knowledge, and references existing anywhere in the world prior to filing a patent. Of course, not all prior art matters. When patent agents and attorneys talk about “prior art,” they are referring to the following, in relation to your particular invention:

• Prior Patents (U.S. or Foreign);

• Published Articles;

• Public Demonstrations; and

• Other Public Disclosures.

Why are Prior Art references important?

Under the Patent Law, “[o]n taking up an application for examination … the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention.” Essentially, if your invention is disclosed anywhere in the prior art, it is not patentable.

How do I search for Prior Art?

A great place to start is to look through existing patents. You may do so on the USPTO’s website, the European Patent Office’s website, any one of several paid subscription services, or by using Google Patents. A well-done search should reveal similar inventions, including those inventions upon which your own invention likely relies. More importantly, the prior art search should help educate you, as the inventor, as to the current state of your particular field.

European? Why do I need to search that?

The USPTO considers all prior art globally, not just applications, patents, and other descriptions from the United States. Many companies around the world file patents with the EPO, and many of these are in English, or translated into English. We recommend searching through applications and patents separately.

Is searching really that simple?

Not really. Companies usually have experienced attorneys run prior art searches using sophisticated software. However, your basic search should help inform you if your invention already exists and will aid in helping you determine the bounds of your invention!

How can I get help?

In Ohio, the USPTO has a Patent & Trademark Resource Center located at the Cleveland Public Library Main Location! For a full list of Patent and Trademark Centers in Ohio please visit the USPTO website here. The Patent and Trademark Resource Center can teach you how to do an effective and efficient patent search. The library runs regular patent search classes throughout the year. A library staff member may be available for individual consultation on an appointment basis.

You may contact the CPL for more information on upcoming classes by calling (216) 623-2800.

The Patent Pro Bono Program is not directly affiliated with the Patent and Trademark Resource Center, so if you are interested in consultation with the center, you must contact the center directly.

Application

Once you have completed all of these steps, you can submit the Patent Pro Bono Program Inventor Application.

Due to the limited pool of volunteers, the Ohio Patent Pro Bono Program is only able to address one open case per applicant at a time.

What happens next?

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 you 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. Unfortunately, we cannot assist all applicants.

Income Guidelines:

Inventors must have a combined income of less than 300% of the poverty guidelines. The Ohio Patent Pro Bono Program relies on information provided by the Department of Health and Human Services, published yearly and available at aspe.hhs.gov. The data provided below is for informational purposes only and may not be updated as quickly as the statistics available on the official website.

300% Federal Poverty Guidelines – 2024

FEES:

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. Our volunteer attorneys assist program participants with filing patent applications with the United States Patent and Trademark Office.

For example, the filing, search and examination fee due to the USPTO for a Non-Provisional Application (micro entity) is $400.

The information contained below is for informational purposes only. Inventors should check the official USPTO Fee Schedule before relying on any of the amounts listed below. Not all fees are applicable. Your application may necessitate payment of other fees not listed. If a patent issues, there are also additional maintenance fees due from time to time.The USPTO fees are greatly reduced (up to 75% off the standard rate) for “micro-entities” such as those qualifying under this program.

Common U.S. Patent & Trademark Office Government Fees for Micro-Entities

*As of January 16, 2018.