Inventors, inventor groups, and inventor-owned small businesses who meet certain financial thresholds and other criteria may be eligible for free legal assistance when appearing before the Patent Trial and Appeal Board (PTAB). The PTAB Pro Bono Program matches volunteer patent professionals with financially under-resourced inventors, inventor groups, and inventor-owned small businesses to provide free legal assistance in preparing ex parte appeals to the PTAB.
Requirements
The PTAB Pro Bono Program supports solo inventors, inventor groups, and inventor-owned small businesses.
Solo inventor qualifications
- Number of inventors: there must be exactly one known inventor for the invention
- Residency: the inventor must reside in the United States
- Income: the inventor must have a total household income of less than 400% of the federal poverty guidelines (Modified as of April 1, 2023)
- Knowledge: the inventor must demonstrate knowledge of the ex parte appeal process by successfully completing a video training course consisting of two videos. The first video explains how the PTAB Pro Bono Program works. The second video walks through the ex parte appeal process.
- Timing: the inventor must apply to the program within one month from the date of an office action in which the claims have been twice or finally rejected.
- Ownership interest: the inventor must not be under an obligation to assign (sell or give ownership of) the application or resulting patent to a third party. (New as of April 1, 2023)
Micro-Entity Status(Eliminated as of April 1, 2023)
Inventor group qualifications
To qualify as an inventor group:
- Number of inventors: there must be no more than four known inventors for the invention
- Qualify individually:
- Residency: each inventor must reside in the United States
- Income: each inventor must have a total household income of less than 400% of the federal poverty guidelines
- Knowledge: each inventor must demonstrate knowledge of the ex parte appeal process by successfully completing a video training course consisting of two videos. The first video explains how the PTAB Pro Bono Program works. The second video walks through the ex parte appeal process.
- Timing: the inventors must apply to the program within one month from the date of an office action in which the claims have been twice or finally rejected.
- Ownership interest: each inventor or the inventor group must not be under an obligation to assign (sell or give ownership of) the application or resulting patent to a third party.
Inventor-owned small business qualifications
To qualify as an inventor-owned small business:
- Inventor owned: the small business must be 100% inventor owned
- Number of inventors: there must be no more than four known inventors of the inventor-owned business
- Assignment to organization: each inventor must agree to assign his/her rights to the business
- Qualify individually:
- Residency: each inventor must reside in the United States and the principal place of business of the inventor-owned small business must be in the United States
- Income: each inventor must have a total household income of less than 400% of the federal poverty guidelines
- Knowledge: each inventor must demonstrate knowledge of the ex parte appeal process by successfully completing a video training course consisting of two videos. The first video explains how the PTAB Pro Bono Program works. The second video walks through the ex parte appeal process.
- Timing: the inventor-owned small business must apply to the program within 1 month from the date of an office action in which the claims have been twice or finally rejected.
- Previous year business income: if the business was operating in the preceding calendar year, the business must have had a total gross income of less than $150,000.
- Projected year business income: the business must expect a total gross income of less than $150,000 in the current calendar year.
- Ownership interest: each inventor or the inventor owned small business must not be under an obligation to assign (sell or give ownership of) the application or resulting patent to a third party.
How inventors can apply for assistance
The PTAB Bar Association is the clearinghouse for this program. In this role, the PTAB Bar Association (clearinghouse) will review completed applications to determine if the applicant meets the eligibility qualifications and any additional requirements for the program. If the clearinghouse determines that the applicant satisfies all the eligibility requirements, then the clearinghouse will attempt to match the applicant with a volunteer attorney. The clearinghouse itself does not provide legal advice or representation.
The size and scope of this program is limited, and the clearinghouse may not have a suitable volunteer available for every qualified applicant. Qualifying for the program does not guarantee that the applicant will receive representation.
Please visit the PTAB Bar Association for more information on applying for ex parte appeal assistance.
How patent practitioners can volunteer
Registered patent practitioners are critical to the success of the PTAB Pro Bono Program. If you are a patent practitioner interested in volunteering your legal services, please complete an online volunteer application form.
Helpful Tips for Inventors and Volunteer Patent Practitioners When Working Together
After an inventor and a volunteer practitioner begin working together, it is important that they form a good relationship built on trust, honesty, and openness. This type of relationship fosters better legal advice and advocacy. The documents below contain helpful tips for inventors and volunteer practitioners to consider employing when working together to strengthen their working relationship.
Contact the PTAB Pro Bono Program
If you have any questions, please contact the USPTO at PTABprobono@uspto.gov. Please note that the USPTO does not handle the application process or the matching process. Any questions about those topics should be directed to the PTAB Bar Association at PTABprobono@ptabbar.org.
Other USPTO pro bono programs
The PTAB Pro Bono Program is separate from the United States Patent and Trademark Office's (USPTO) Patent Pro Bono Program, which provides free legal assistance to under-resourced inventors in filing and prosecuting a patent application for their inventions. Please visit the Patent Pro Bono Program and other assistance programs offered by the USPTO for more information.
Additional resources
The USPTO offers a variety of free resources to aid inventors. These resources include patent application assistance, education and training, help appealing or fixing an issue, and other services. Check out the free resources webpage for more information.
Practitioner recognition
The PTAB Pro Bono Program opened in 2022. Over the past two years, eleven practitioners have volunteered to participate and either offer free legal representation or administer the program. We recognize and appreciate these practitioners, along with their employers, and recognize their support. Participants are listed in alphabetical order by last name.
| Volunteer | Law Firm/Company | City & State |
|---|---|---|
| Palash Basu | Brownstein Hyatt Farber Schreck, LLP | Washington, DC |
| Larissa Bifano | DLA Piper, LLP | Boston, MA |
| Eugene Goryunov | Haynes and Boone, LLP | Chicago, IL |
| Monica Grewal | Wilmer Cutler Pickering Hale and Dorr, LLP | Boston, MA |
| Ben Haber | O’Melveny & Myers, LLP | Los Angeles, CA |
| Steven Kellner | DLA Piper, LLP | Philadelphia, PA |
| Jessica Li | Fish & Richardson | Redwood City, CA |
| Jennifer O’Connell | JOC Patent Law PLLC | Raleigh-Durham, NC |
| Lawrence Pope | LP Patent Law | River Hills, WI |
| W. Karl Renner | Fish & Richardson | Washington, D.C. |
| Michael Shepherd | Fish & Richardson | Washington, D.C. |