Patent Pro Bono Program: Attorney Resources
Patent Pro Bono Program: Attorney Information
Sample Limited Scope Agreement for Patent Pro Bono Clients
- The NC Bar Foundation (NCBF) has partnered with the non-profit organization Georgia PATENTS to coordinate pro bono patent legal counseling services for low-wealth entrepreneurs. NCBF Patent Pro Bono Program/Georgia PATENTS’ assistance is free to:
a. solo inventors with a household income of less than 300% of the federal poverty guidelines who have not filed more than 4 prior patent applications;
b. nonprofit organizations with 4 or less inventors who meet the solo inventor criteria with annual operating budgets of $175,000 or less per year; and
c. small businesses/inventor groups with 4 or less inventors who meet the solo inventor criteria and have business income of less than $150,000.
You can learn more about inventor qualification’s and requirements here.
- After accepting a case, NCBF will send an email to the inventor that his/her case has been accepted. As the volunteer attorney, you will be blind copied on the email, which will notify the inventor that s/he should hear from you within 5 business days of receipt of the email. You may use this initial contact with the inventor to schedule a mutually convenient time to talk about his/her case.
- If for any reason or at any time you are no longer able to assist the inventor or you encounter a problem regarding your representation, please contact the NCBF at [email protected] as soon as possible.
- All legal work through the NCBF Patent Pro Bono Program is done on a pro bono basis. However, the inventor has acknowledged responsibility for out-of-pocket expenses (such as filing fees or the cost of drafting services) in relation to the case. Please discuss any potential expenses with the client at the onset of representation.
- The inventor has acknowledged the assigned attorney is NOT his/her general counsel. You should only handle the specific matter assigned. If the inventor requires additional assistance with a different invention, the inventor must reapply to NCBF/Georgia PATENTS for further assistance.
- The NC Bar Foundation’s Patent Pro Bono Program provides malpractice insurance coverage for participating volunteer attorneys that is limited to the scope of the client matter assigned. If you wish to further assist the client or the client wishes to become a paying client, please inform the NCBF at [email protected]. If the inventor requires further assistance from the Patent Pro Bono Program regarding the same invention, the inventor will be asked to re-apply to the program depending on the complexity of the case.
- The client has already agreed not to challenge your decision to withdraw from representation if the USPTO issues a final refusal.
- Where appropriate, you are encouraged to limit your pro bono services to advice and counsel that will support the client to file a patent on his or her own. If you determine that it is appropriate in your client’s situation, you may appear before the USPTO as a “representative” of the inventor instead of filing a power of attorney. In accordance with 37 CFR §§1.32, 1.33(a) and 1.34, a patent practitioner may choose to act in a representative capacity by so designating when filing the application. The practitioner is permitted to withdraw by changing the correspondence information back to the inventor either at the conclusion of the agreed upon legal services, or prior to the appointment of any power of attorney. Of course, all attorneys should review the relevant patent rules governing correspondence changes when deciding the type of capacity they choose before the USPTO. Careful consideration should be given when deciding the capacity as it may later affect how attorneys terminate their representation.
- The USPTO has a Pro Bono Certification Form to track applicant filings. Please use this form with the initial filing with the USPTO.
- The NCBF Patent Pro Bono Program will send out quarterly update emails regarding the status of the assigned case. Please respond to these emails in a timely manner regarding progress on the case. We will include a Case Close link in each update email.
- At the completion of your representation, please visit the Case Close link provided in one of the update emails regardless of whether the issue was resolved or not.
We sincerely appreciate your assistance and your willingness to volunteer your time and expertise with the North Carolina Bar Foundation’s Patent Pro Bono Program.