Patent Pro Bono

By Dennis Crouch

We have begun the week designated as “National Pro Bono Week.” Most state attorney ethics rules indicate that “every lawyer has a professional responsibility to provide legal services unable to pay.” See ABA Model Rule 6.1. In its proposed ethics rules, the USPTO suggested no need to adopt the ABA Model Rules regarding public service.

The USPTO recognizes that every practitioner, regardless of professional prominence or professional workload, has a responsibility to provide legal services to those unable to pay and that every practitioner should support all proper efforts to meet this need for legal services. However, attorney practitioners’ individual state ethical rules should provide guidance and regulations regarding their respective duties to provide voluntary pro bono service, accept court appointed representation, and serve as members of legal service and legal reform organizations. The USPTO is declining to add an increased regulatory requirement on attorney practitioners.

Unfortunately, this statement by the PTO neglects the reality that a large number of PTO practitioners are not lawyers but are patent agents.

The America Invents Act (AIA) does include a directive requiring the USPTO to help establish patent pro bono programs. In their recent article, Amy Salmela and Mark Privratski go through one approach to a patent prosecution pro bono program that they helped to create in Minneapolis. See Patent Law Pro Bono: A Best Practices Handbook. The Federal Circuit Bar Association (FCBA) has also announced its new role as the “National Clearinghouse” for receiving information from individuals and businesses interested in receiving pro bono assistance in the Virginia and Maryland area. See www.fedcirbar.org/ptoprobono. Other regional patent pro bono operations are beginning around the country.

47 thoughts on “Patent Pro Bono

  1. Fish, so let me get the “big” picture. We help the small fry get their patents. If they produce no products, we call them trolls and tell them if they file suit, they pay the other sides costs and attorney fees if they lose, and if they win, they obtain no injunctions.

    I see.

    “Equal justice under the law!” pleads the blind lady holding the scales of justice.

    “Not really,” replies Big Business. “Might makes right.”

  2. patent law and practice really doesn’t lend itself to pro-bono services. If we patent attorneys are going to provide pro-bono legal services it would have to be in some other legal field, e.g., domestic relations, criminal, immigration

  3. Sparkfun is a great site, but they sell common elements like LEDs and simple processors (many of which are patented) along with design ideas from third parties that they obviously could not patent. Do you really think that Sparkfun’s “innovative” products like “mini push button switch” and “bee connector” would be patentable? It’s a terrible example.

  4. The malpractice risk is is why my firm does not do pro bono work, and I do my pro bono work outside the IP field (in volunteering with legal groups advising in non-IP fields, with agencies that provide their own malpractice coverage). The risk of malpractice claims, especially with small one-off inventors is relatively large, and the payouts are even larger. Our malpractice insurance will not cover it.

    I cannot encourage anyone to provide direct pro bono patent drafting advice, without some sort of malpractice coverage. Maybe one way of approaching this is to establish a pro bono practice through a university that could provide the malpractice coverage needed?

  5. I answer quick questions about general IP issues for free every day.

    Now spending several days or a week of my time to help someone else protect their ideas and make money? That’s different.

    By the way, when you do that discount, that client places the same value on your services that you have. And do you think they tell their friends that you cost 6k for a patent app, or 3k? What do you think their friends are going to expect to pay?

  6. There are different ways that a patent attorney can help a client, that can be viewed as “pro bono” efforts. For instance, I have offered significant discounts and capped (fixed priced) patent applications for some individuals for whom had a good invention but could not afford to pay my regular rates. Some of these discounts have approached 50%, and I reflect the discount or “credit” on the invoice so that they know the full value of the services I provided, but showing my discount. They are very appreciative and I have no doubt that they will refer my services and or otherwise recognize my efforts in helping them. This is not full “pro bono” but it is pro bono in my view because it lowered the bar to their seeking patent protection and I gave up value for my services that I did not otherwise have to give up. I believe this model is more applicable to patent practice than free legal services.

  7. Did you have a point to make MM, or did you just want to post an insult?

    Prof. Crouch – another dead prisoner. How many more?

  8. Great example. Hurray for you. Now actually provide what I actually asked for. Where ate all these great modern advanced societies that ascribe to your world view?

    Stop drinking the kool-aid and look at the total package. Society is not ready for No-Patents. Communism too is great as an ideal, but the real world intrudes. Funny that you accuse everyone else grounded in the reality of this world as delusional and yet it is you that operate in a Utopia of the mind, disconnected from the real world.

  9. the “integration” aspect is a prime example of your self-defeat in posting

    I think I saw you and your twin brother 101E on 60 Minutes a few years back. Even then you two were speaking in your secret language. Pretty cool!

    the pinnacle thrust

    Is that a legal term? LOL.

  10. it now has 143 employees, [...] and makes 431 unpatented products.

    Everybody knows that if they had 431 patented products, they’d have at least 431 employees. That’s how patents work, right? I read that somewhere.

  11. @anon: check out http://www.sparkfun.com.

    Sparkfun was created in 2003, and it now has 143 employees, 75 million dollars of sales, 600,000 customers and makes 431 unpatented products.

    Patents = failure. Getting a product patented is sadly a kiss of death for that product. IP law just does not work the way people are socially conditioned to think. Patents hinder innovation.

    Patents are just not needed. Read Boldrin and Levine’s book, Against Intellectual Monopoly.

  12. Well said. You’re much nicer about it than I am. You should be a diplomat. We could play good cop bad cop.

  13. Academia suits you.

    You’ve already forgotten what it’s like to fight your way through a docket for a vacation day apparently.

  14. I don’t think this “high” level of smarminess is what Prof. Crouch aspired to when he said he wanted to improve the level of comments…

    Especially given that the “integration” aspect is a prime example of your self-defeat in posting, is the pinnacle thrust of the 9-0 Prometheus decision and is the takeaway from the the Office response to that decision.

    Being smarmy in your own self-defeat is a bit like playing in your waste. Please grow up already.

  15. Society needs to wake up.

    Talk about delusional…

    Tell me “Beaker,” what modern day advanced society has embraced your view and chucked patents or any other intellectual property protection?

    Where are these sterling examples of non-delusional excellence?

    Why, if your mantra is correct, has not anyone blazed a path to glory and advanced themselves without patents?

    And please, spare me the “cause and correlation” baloney – I am asking why your example is absent – keep an eye on the ball, and come back (only) when you have an answer.

  16. As I once went in to meet an acquaintance at the receiving office I went past some fellow who had the aroma and looks of someone who lived in the streets and who also was clutching a few sheets of paper.

    He was apparently seeking protection for some idea of his. After providing the standard material (various applicant’s guides and schedules), the colleague tried to explain as calmly as possible that it wasn’t the duty of the patent office to counsel or serve prospective applicants on their specific needs, such as drafting an application. At one point he suggested seeing a patent representative, and provided a printout of those in the neighbourhood. The guy was beaming, and my colleague finally found some relief.

    Many European countries offer free inventor counseling. This activity is particularly developed in Germany where you will be able to sit down with a professional for a 15-30 minutes first consultation. These services are sponsored by universities, chambers of commerce, the patent bar, professional societies, and the German patent office itself. These meetings are pretty short, so I would expect the discussion to be very focused (I saw these from afar without being able to listen in). I believe that most of the counsels donate their time, but I expect these clinics to be a good way of recruiting new, solvent, customers.

  17. IP law isn’t even necessary. Delusional IP lawyers doing work that they think is needed servicing delusional clients thinking that they need IP law to succeed in business – it is very sad indeed. Society needs to wake up.

  18. Priority 2003??? WOW! A MIRACLE!

    I wondered how they got the signature on Hubbard’s inventor’s declaration… PAIR has a “declaration on behalf of a deceased or incapacitated inventor”, which was objected on the ground that “the citizenship and residence of the deceased inventor Ron L. Hubbard are also missing from the declaration”. A letter was filed in March 2007 pointing to a declaration which was believed to comply with 37 CFR 1.497 (a)-(b). I can’t locate this declaration in the wrapper.

    Other oddities are that one of the other inventors’ signature couldn’t be obtained, and that the small applicant status is claimed.

    Hubbard did seek a patent back in 1965 for his thingy.

  19. Solo inventors, especially poor solo inventors, just cannot understand why, when they can’t even find their product in Walmart, a hundred pieces of prior art defeats their application. But they can be genius at concocting a conspiracy theory.

    That method of conspiring is probably a patentable business method. It just needs to be “integrated” with a computer. And maybe some rubber.

    PROMOTE THE PROGRESS!!!

  20. Have you ever done pro bono work for indigent clients? Spend a day in court with one, and you will immediately understand that it will not work in the patent prosecution arena.

    Every minute you spend working for free will only go to benefit a business that makes money. If not, every minute you spend working for free will go to waste. With so many poor people needing pro bono work to avoid injustice, with utterly no access to angel money, SBA loans, or venture capital to bail them out, who in their right mind would suggest pro bono for start up businesses?

    And when you don’t get claims allowed for a pro bono client, you are wide open for malpractice, because they know that their idea was worth billions, and they only reason they don’t get a patent is because you screwed up, or you conspired with the patent office, or you conspired with Big Oil and the car companies. Solo inventors, especially poor solo inventors, just cannot understand why, when they can’t even find their product in Walmart, a hundred pieces of prior art defeats their application. But they can be genius at concocting a conspiracy theory.

    Take a cue from Legal Aid: cases with potential for monetary recovery by the client are not suitable for pro bono. When I did pro bono, we had to turn down cases with potential for recovery.

    For patent attorneys who want to help, go to your nearest civil clinic and lend a hand to the truly needy. You will be amazed at how much the system screws the poor, and how much they need help, and how much you can actually help them. You can learn as you go with the guidance of others.

  21. Doctors and hospitals drive patents into bankruptcy. While I’m sure some doctors donate there time to the poor. All doctors do not.

    The plumbers I have hired insisted that I needed to replace $1000 “worth”of controllers, pilot pipes and other equipment when all I needed was a gas valve. Then they insisted there was no adjustment for the output and left it way to high so that it would crack the tubes in my boiler. I then read the instructions on the valve and made the adjustment myself. So, don’t tell me all plumbers do pro bono work. Or if they do, they are clearly ripping off one client to pay for the free work provided to others.

    If “pro bono IP” work is a valid social good, then tax society as a whole to pay for it. Slavery was abolished a while ago.

  22. I don't know what the best answer is here, and I certainly do not trust the ABA as a moral guide. However, the ABA does not consider it to be pro bono unless you are providing services "without fee or expectation of fee."  If you do collect a fee for your pro bono services, the ABA's expectation is that you will donate that fee to a worthy cause. link to americanbar.org

  23. Dennis, when a doctor takes a patient on a government program where the fees are set far below market, the doctor, in a sense, is doing his share, pro bono.

    We attorneys who represent indigents in court get paid, but very low fees. I think this is a form of pro bono work.

    Perhaps the PTO could provide a program for the indigent to pay patent agents/attorneys a low standard fee for representing the indigent, if after a preliminary review, the office believes the indigent’s invention is both useful and eligible. Obviously, these same indigent folks should be eligible for the new micro-fees.

    Just a thought.

  24. do “doctors, veterinarians, carpenters, plumbers, accountants” do pro bono work for for-profit businesses?

  25. Inspired by this exchange, I did a quick search to see how many hits were obtained when the USPTO patent database was searched for hits in the assignee field that matched the term “church.”

    The answer: 402.

    Most of these hits, I’m sure, relate to individuals named “Church.” But not all of them.

    For example, US Pat. 8,121,676 to L. Ron Hubbard et al. was granted on February 21, 2012 (priority claim goes back to 2003) and assigned to the Church of Spiritual Technology in Los Angeles.

    Claim 1:

    1. A device operated by a user to monitor and indicate changes in resistance of a living body comprising:

    a resistance measuring circuit having external leads for sensing the resistance of a living body placed across the external leads;

    an amplifier coupled to the resistance measuring circuit for producing an analog measurement signal indicative of the sensed body resistance;

    an indicator circuit for displaying visually perceivable indicia representative of sensed body resistance changes; and

    a digital processing unit for digitizing and digitally processing the analog measurement signal in a manner that substantially offsets effects of component aging, tolerances and temperature on measurement signal accuracy wherein the digital processing unit includes means for substituting a plurality of electrical resistance values for sensing by the amplifier in lieu of a body resistance to produce measurement signals corresponding to simulated body resistance values, said plurality simulating a plurality of body resistance values, means for digitizing the measurement signals corresponding to the simulated body resistance values, and storing in memory a resulting plurality of calibrated measurement values corresponding to the plurality of simulated body resistance values, compensation means for computing, based on the stored calibrated measurement values, calibrated measurement values to be associated with respective additional body resistance values, means for producing an indicator-driving series of digital difference values during the monitoring of the living body’s resistance that represent a difference between the monitored living body’s digitized measurement signals and a selected user-adjustable base value, the user-adjustable base value being selected by the user from calibrated measurement values, manually positionable means operable by the user to select from the plurality of said base values, and sensitivity adjustment means for controlling a change in the indicator-driving difference values caused by a change in the monitored living body’s sensed resistance, and means applying an automatic correcting gain factor to the indicator-driving value as a function of the selected base value to produce the digitally processed measurement signal, the gain-applying means applying a first non-linear gain when the selected base value corresponds to a low living body resistance value of less than approximately 5 K-ohms, and a second non-linear gain when the selected base value corresponds to a high living body resistance value of more than 100 K-ohms, the gain for the living body resistances values therebetween being essentially a constant, said first non-linear gain being more than said constant and increasing with decreasing base value, said second non-linear gain being less than said constant and increasing with increasing base value.

  26. The inventor that wants pro bono patent help is the inventor with some get rich quick scheme that is going to go nowhere or is going to make her rich. Either the pro bono work is a waste of time, will result in a frivolous mal practice suit or will make the inventor rich and should be paid for.

  27. Attorneys have been doing pro bono work for hundreds of years — as do doctors, veterinarians, carpenters, plumbers, accountants, etc.  If you can't make enough as a patent attorney to do 50 hours pro bono per year then you probably need a new profession. 

  28. Ahmen brother. If I were billing and getting $500 an hour, that would be one thing…. but I ain’t and the rules should not assume that I am.

  29. Sure, I’ll do pro bono … for a 50% of the stock of the company owning the IP.

    This isn’t criminal defense, family law, drafting wills, etc. This is people trying to start a business and make money… kind of like me. When is my malpractice insurance, health insurance, and rent going to be “pro bono”? What other profession tolerates such nonsense?

  30. Re: “The America Invents Act (AIA) does include a directive requiring the USPTO to help establish patent pro bono programs.”

    The USPTO references this on
    “http://www.uspto.gov/inventors/proseprobono/index.jsp”, and writes “The USPTO has been interacting with IP law associations to assist in the establishment of such programs and the first program was launched in June 2011 with the Minnesota pilot program. An additional 5 programs are slated to begin operation during 2012.”

    So, on September 13, 2012, I sent in a query to the USPTO asking about the additional 5 programs. They replied “We have forwarded your inquiry to the appropriate special program office.” I sent a followup query a week later. The PTO replied “We have reforwarded your inquiry to the appropriate special program office.”

    This program may not actually exist.

  31. Lets say a practitioner provides pro bono legal services in drafting and filing a patent application and the pro bono applicant then becomes rich based on the patent (or otherwise). Should there then be an obligation then for the applicant to pay or even more than pay for the legal services?

    What about mal practice issues? Should the practitioner have to carry that risk pro bono as well?

    Should there be an obligation on corporate clients not to nickle and dime the practitioner so there can be funds that allow for pro bono work?

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