INVENTOR ASSISTANCE PROGRAM
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1 INVENTOR ASSISTANCE PROGRAM
2 Inventor Assistance Program (IAP): Minnesota Invention What it is: Nation s 1 st patent law pro bono program, developing with USPTO involvement Pilot program blazing trail for patent law pro bono efforts in other states
3 HOW the Inventor Assistance Program (IAP) Came to Be In 2010, Director Kappos told leading members of Minnesota s IP legal community of hopes of developing patent law pro bono programs across the nation they responded. They invited LegalCORPS to help them develop a pilot program in Minnesota. The project was co-founded by LegalCORPS and the law firms of Patterson Thuente IP, Lindquist & Vennum and Myer & Njus. The program was launched in 2011 with the encouragement and involvement of the USPTO -- and with the support of a group of Minnesota corporations and law firms.
4 IAP Founding Funders 3M VALSPAR FAEGRE & BENSON MERCHANT & GOULD DORSEY SCHWEGMAN LUNDBERG &WOESSNER ECOLAB ROBINS KAPLAN FREDRIKSON& BYRON MUETING RAASCH & GEBHARDT BARNES & THORNBURG FULBRIGHT & JAWORSKI FISH & RICHARDSON SCHUMAKER& SIEFFERT
5 WHY Patent Law Pro Bono? Expand access to the patent law system to individuals with good ideas but without financial resources for expensive legal services Overcome one financial roadblock to bringing new innovations to market boost for economy Help USPTO reduce backlog, smooth process involving pro se patent applicants Provide patent attorneys opportunities for pro bono legal service in their unique area of the law Rule of Professional Conduct #6.1: Aspire to provide 50 hours pro bono per year
6 LegalCORPS: What it is & does Provides free assistance in transactional business law matters to low-income entrepreneurs and small nonprofits through services of volunteer attorneys. Independent nonprofit incorporated in 2004 at the recommendation of an MSBA task force. Expands access to our legal system and provides business lawyers opportunities for public service in their areas of expertise.
7 Services the IAP Provides Patent prosecution for non-provisional applications: Assistance with filing non-provisional patent application Assistance with responses to USPTO office actions (Applicants for assistance with filing provisional patent applications now are referred to the IP Law Clinic at William Mitchell College of Law) Eligible clients can get related business law assistance through LegalCORPS (e.g., entity formation, license agreements ) (Clients must pay all USPTO filing fees)
8 Types of Assistance IAP Does NOT Provide prior art searching, patentability analysis, clearance or freedom to operate analysis, licensing, transfer, enforcement or disputes assistance with the prosecution of international patent applications that correspond to the application.
9 WHO Does the LegalCORPS IAP Serve? Inventors must: Have a strong connection to Minnesota. Have already filed a patent application with the USPTO. Meet income guidelines (300 % of the federal poverty level or below) Pass a subject matter screen by the program.
10 Progress of the IAP Since fall, 24 applicants have been found eligible & referred for pro bono assistance: 1 patent issued after assistance in response to office action 8 now in patent prosecution process 8 referred to William Mitchell IP Clinic for help with provisional applications 2 in attorney recruitment stage 5 clients decided not to proceed (At least 60 individuals have inquired about receiving assistance through the IAP)
11 Progress of the IAP Since fall: 40 attorneys have joined the volunteer roster for the program 23 have attended program orientation sessions now eligible for referral of pro bono matters through the IAP
12 VOLUNTEERING for the IAP LegalCORPS provides professional liability insurance for properly licensed attorneys on its volunteer roster for pro bono matters referred to them by LegalCORPS. Attorneys can register online with the volunteer form on To get referrals of IAP clients, attorneys must attend a program orientation/training session
13 What Volunteers Commit to Doing Engagement letters outline the scope of representation for each matter The scope of representation does not include any other patent application(s) Volunteers use own docketing software -- LegalCORPS not docketing volunteers cases The client should directly pay costs Attorney should advise client about costs in advance. Attorneys advise that when a patent issues, the client will be responsible for enforcement & business development
14 Nationwide Implementation Task Force America Invents Act Mandate [35 USC, Sec. 32.] (a) IN GENERAL. The Director shall 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. (b) EFFECTIVE DATE. This section shall take effect on the date of enactment of this Act.
15 Nationwide Implementation Task Force Mission Facilitate nationwide implementation of patent pro bono programs Objectives Monitor progress of Minnesota Patent Pro Bono Pilot Develop a representative model and best practices manual for launch of additional patent pro bono pilots Provide ongoing guidance to additional pilots Examine ways to create efficiencies for and among pilots Respond to requests from the USPTO Provide progress reports on nationwide implementation Disseminate information on importance of pro bono IP At request of USPTO Director, meet quarterly
16 Nationwide Implementation Task Force Task Force Makeup USPTO John Calvert Administrator of the USPTO Inventor Assistance Center Judiciary Chief Judge Randall Rader U.S. Court of Appeals for the Federal Circuit James Brookshire Executive Director, Federal Circuit Bar Association Minnesota Patent Pro Bono Pilot Jim Patterson Managing Partner, Patterson Thuente IP Candee Goodman Pro Bono Director, Lindquist & Vennum, PLLP National IP Community ABA o Amy Salmela Patterson Thuente IP, IPL Section Pro Bono Committee co-chair o Paul Roberts Foley & Lardner AIPLA o Georgann Gruneback Fox Group o Laura Zeman-Mullen Zeman-Mullen & Ford IPO o Kevin Rhodes Chief IP Counsel, 3M o Harry Gwinnell Greenblum & Berstein Independent Inventor Community Warren Tuttle President, United Inventors Association IP Academic Community Jay Erstling William Mitchell College of Law
17 Nationwide Implementation Task Force Rollout Timeline 4 new programs in 2012 California Colorado Texas Washington D.C. area 10 new programs in 2013
18 CONCLUSION Minnesota s IP & pro bono legal communities are taking the lead in an important initiative to expand access to a part of our legal system that has had very limited pro bono activity More information:
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