REQUIREMENTS FOR PRO BONO PATENT ASSISTANCE

  1. INVENTOR STATUS
    1. Must be an individual or group of individuals, each of whom meet every listed criterion in this section.
    2. Must have a gross income of no more than 200% of the poverty limit.
    3. Must not be named as an inventor on more than four previously filed U.S. non-provisional patent applications. This does not include provisional patent applications, patent applications in countries other than the U.S., or an international patent application under the Patent Cooperation Treaty.  This does include any U.S. patent application that is a national stage of an international patent application.
    4. Must not be under an obligation to license or assign the right in the invention to a person or entity that would not qualify under this section.
    5. The inventor(s) may assign their rights to a business entity in which the inventor(s) hold the only interest, and if the business entity has a gross income not exceeding $150,000.
    6. If conditions change and the inventor(s) no longer meet any of the requirements above after representation has started, the pro bono representation will end.  In such case the attorney may withdraw from representation as otherwise allowed by law and applicable ethical rules, or request that the attorneys’ services be compensated going forward.
  2. TIMING REQUIREMENTS
    1. If a provisional patent application has been filed, you must apply for pro bono assistance within 10 months of the filing date of the provisional patent application.
    2. If information about your invention has been openly disclosed to anyone, you must apply for pro bono assistance within 10 months of the disclosure.  This does not apply to a disclosure that was made under the terms of a valid confidentiality agreement.
  3. PAST PATENTING EFFORTS
    1. We will not accept applications to handle a case that was started by another attorney.
    2. We will not accept an unfiled application that was partially or wholly drafted by another attorney.
  4. INVENTORS’ OBLIGATIONS
    1. Each inventor must take the online training course for independent inventors offered by the U.S. Patent and Trademark Office (USPTO) available at http://www.uspto.gov/video/cbt/certpck/index.htm, complete certification, and present the certificate if requested.
    2. A novelty search must be performed ahead of time, either by the inventor(s) or by someone else on behalf of the inventors.  The inventor(s) must provide the 10-12 closest pieces of prior art to the attorney.  If the inventor(s) opt to hire a contractor to perform the search, the costs of the search shall be borne by the inventor(s),
    3. The inventor(s) are responsible for all official fees.  These include the official patent application filing fees due at the time of filing (which are at least $400) and the issue fee that is due prior to grant of the patent.  Other official fees may be included as well.
    4. The inventor(s) must promptly respond to all requests for assistance from the attorney (including providing necessary signed paperwork), to prevent the need to pay late fees to the USPTO If late fees are required because of the timing of a response to such a request from the inventor(s), the inventor(s) must furnish the fees ahead of time.
    5. If drawings are required for a complete understanding of the invention (which is usually the case), preparation of the drawings is the responsibility of the inventor(s).  If a professional draftsman is required, the inventor(s) are responsible for any drafting fees.
  5. ATTORNEY’S SERVICES
    1. The attorney will attend to drafting and filing one non-provisional U.S. patent application.
    2. The attorney will prosecute the patent application at the USPTO until either (i) a response is filed to a final office action, or (ii) the issue fee is paid.
    3. The attorney is not responsible for requests for continued examination, appeals, challenges to USPTO decisions in a court of law, prosecution after the events listed in (b), foreign patent applications, international patent applications, or additional U.S. patent applications.
    4. The attorney’s services may be expanded by mutual agreement between the inventor(s) and the attorney, which should be in writing.
    5. The attorney will require no attorney fees or paralegal fees for the listed services, but may require prepayment of outside costs such as government filing fees.
    6. The attorney may only withdraw from representation if allowed to do so under the applicable ethical rules.