Guest Post by Jennifer McDowell, USPTO Pro Bono Program Coordinator and Courtney Caliendo, Florida Patent Pro Bono Program Manager
Florida may have been among the last states to offer Patent Pro Bono services to qualified inventors and small businesses, but it was also among the quickest to launch. The United States Patent and Trademark Office (USPTO) identified the Institute for Commercialization of Public Research (Florida Institute) as a potential statewide program coordinator in January 2015, finalized a partnership agreement in March, and Florida Patent Pro Bono (FloBonoSM) officially launched statewide with a series of activities during the first week of May.
Formed by the Florida Legislature in 2007, the Florida Institute is a nonprofit organization that supports new company and job creation based on publicly-funded research. Working collaboratively with Florida’s many universities and private research institutions, the Florida Institute helps uncover commercially viable startup company opportunities, and provides both company building support and seed funding to help them grow. The organization maintains extensive relationships with the service provider, business, and investment communities, and as a catalyst for innovation, capital attraction and economic development the Institute is an ideal administrator of the Florida Patent Pro Bono Program.
“This Program aligns well with the Florida Institute’s mission to create new companies and jobs in industries that are driving the global economy,” said Jamie Grooms, Florida Institute Chief Executive Officer. “We are pleased to be administering this important Program for Florida inventors with the support of the USPTO, and to expand our programming in support of entrepreneurship, job growth, and innovation-based economic development across the state.”
Like entrepreneurs who know all too well the importance of time to market, the Florida Institute realized it had to design and begin delivering the Program quickly to meet the needs of Florida’s vast, diverse, and widespread innovation community who collectively submit approximately 10,000 patent applications each year to the USPTO, making it one of the leading sources of patent application filings in the nation. The Florida Program expands the national Patent Pro Bono Program that started in 2011 when the U.S. Congress passed the Leahy-Smith America Invents Act (AIA), encouraging the USPTO to support intellectual property law associations across the country to establish pro bono programs that assist financially under-resourced independent inventors and small businesses. Florida’s engagement also represents the successful outcome of one of President Obama’s seven Executive Actions for the USPTO to assist innovators by expanding the pro bono programs in all 50 states and increasing accessibility to legal assistance from registered patent professionals.
Between 2011 and early 2015, 46 states had entered into partnership agreements with the USPTO. As the 47th state to come on board, Florida was tasked with developing a program quickly in order to process not only new applicants, but to also deal with a backlog of approximately 50 inventor applications received before the Patent Pro Bono Program became available in Florida. As the third most populous state in the country with nearly 20 million residents, Florida is so large it spans two time zones and includes multiple metropolitan centers as well as vast rural areas. The state is ethnically diverse as well, with over 27% of its residents, over the age of 5, speaking languages other than English in Florida households. Significantly, in Fiscal Year 2014, inventors in the state of Florida ranked tenth in the country in the number of patent application filed at USPTO.
In order to meet the unique challenges posed by such a large and culturally-diverse state, the Florida Institute, with support from the USPTO, worked quickly to understand best practices put into place by states that had launched earlier, and referred often to the Patent Pro Bono Program Handbook created in Minnesota by the original pilot program team and to the USPTO itself. With a keen sense of urgency, coupled with the freedom to develop a program uniquely suited to meet the needs of Florida inventors, the Florida Institute embarked on community outreach to build a statewide coalition, and took the following key steps to expedite program launch in under 90 days:
- Identified intellectual property lawyers who would assist early on with program guideline development;
- Developed a database of registered intellectual property lawyers and agents who would be instrumental in providing patent pro bono services;
- Identified law school faculty and administration for guidance and preliminary formation of a Steering Committee;
- Created and filled the Program Manager position with an attorney;
- Established eligibility criteria;
- Contacted numerous legal and intellectual property associations;
- Developed necessary applications, forms, and policy documents;
- Created a website with program information, inventor application, and patent attorney and agent volunteer information and registration forms;
- Assessed a backlog of program inquiries;
- Planned two launch events, one in Miami and one in Tampa Bay, to provide program information as broadly as possible; and
- Collected and began responding to new and previously submitted applications.
Critical to the early success of the Florida Patent Pro Bono Program was the Florida Institute’s decision to hire an attorney with experience practicing in the field of intellectual property law as its Program Manager. Before joining the Florida Institute, Courtney Caliendo practiced law at a boutique intellectual property law firm based in Fort Lauderdale, Florida; and is the current Vice President of the Intellectual Property Law Association of Florida (“IPLAF”). “Ms. Caliendo’s knowledge of the intellectual property system, combined with her ties to various legal and intellectual property organizations, facilitates activities such as patent attorney outreach, document drafting, and liaising between inventors and attorneys,” Jane Teague, Florida Institute Chief Operating Officer.
Support from intellectual property organizations such as the American Intellectual Property Law Association (AIPLA), the Intellectual Property Law Association of Florida (IPLAF), the Florida Bar Business Law Section Intellectual Property Committee and the American Bar Association (ABA) was also a key to the expedient start of the Florida program. Working with the USPTO and the FloBonoSM team, these organizations publicized the existence of the program and the launch events. Through the AIPLA’s IP Law Associations and the IP Law Association of Florida, the USPTO facilitated key connections with local contacts in Florida, targeting audiences in the most efficient way. Working in synchronization with these groups enabled the program to grow rapidly the number of volunteer attorneys on its roster, so that it could deliver the much-requested services to inventors in a timely manner.
The first event, held in Miami, put the Florida Institute (literally) on Center Stage at the widely-attended eMerge Americas Conference, to announce the Program’s debut. The session featured technology and social entrepreneur Traver Kennedy, who was ranked by NetworkWorld magazine as one of the “25 Most Powerful People” in computing, and has worked on special projects with the World Intellectual Property Organization (WIPO), a division of the United Nations. eMerge Americas was attended by over 10,000 people, and provided broad exposure to print and network media outlets as well as members of the business and academic communities. The second event was held in Tampa and featured T. David Petite, a prolific inventor in the field of computer networking, and founder of the Native American Intellectual Property Enterprise Council, a non-profit organization helping Native American inventors and communities.
The FloBonoSM team conducted extensive media outreach both before and during the events, and associated press releases were posted in over 180 publications in 25 states and 35 countries worldwide. At last count, well over 2,000 people had viewed the FloBonoSM press release. Both the media outreach and the launch events succeeded in promoting the Program and resulted in increases in inquiries and applications from both inventors and patent attorneys. Since its inception, the Florida Patent Pro Bono Program has received over approximately 72 inventor applications as well as numerous inquiries from inventors and commitments from patent attorneys and agents interested in providing program support.
The newly-minted USPTO-Florida Institute collaboration is now providing under-resourced inventors with improved access to the patent system, streamlining the patent application process and supporting the submission of higher quality patent applications. By matching qualified inventors to patent professionals around the state who provide pro bono legal assistance on specific aspects of the patent process, inventors and small businesses may avoid common pit falls and errors often seen in pro se patent applications. This Program ultimately fosters the growth of Florida’s innovation economy by supporting the protection and commercialization of new technologies.
If “necessity is the mother of invention” then the Patent Pro Bono Program is its greatest champion.
 USPTO Patent Application Locating and Monitoring System 2015
 Census Data retrieved from: http://quickfacts.census.gov/qfd/states/12000.html on May 20, 2015.
 USPTO Patent Application Locating and Monitoring System 2015
 Data taken as of June 11, 2015.
 Quote attributed to Plato.