Pro Bono Reinvented for Intellectual Property

Most attorneys who practice exclusively in the field of intellectual property ("IP") are well accustomed to fielding calls from people trying to learn about securing or enforcing their IP rights. Such inquiries rarely come from people who fit the traditional pro bono mold. They are often artists, college graduates, persons working in skilled trades, hopeful entrepreneurs, or people who have simply had a brilliant idea and are unsure of where to start. Not infrequently, the inquiry originates from someone who is big on ideas, but short on resources. Often, the funding of an IP project for an individual or an attorney under a conventional pro bono approach is just not very feasible.

Securing IP rights is a completely voluntary endeavor, and while the U.S. Constitution supports those rights, helping someone to protect their artwork, trademark, or invention is normally commercially driven, and therefore different from helping someone to stay in their home or secure the custody of their children. A significant challenge for the IP attorney is determining how to engage a pro bono client, appropriately address their needs, cover fees that must be paid on the client's behalf, and define the eventual termination of the pro bono relationship. The IP attorney-client relationship can last for many years and would normally cost many thousands of dollars, a portion of which is attributable to fees that must be paid to government agencies and cannot be waived. IP attorneys who fear the unknown can generally be counted on to fear IP pro bono work.

One of the lesser-known provisions in the Leahy–Smith America Invents Act of 2011 is a mandate that the U.S. Patent and Trademark Office ("USPTO") help to expand the availability of IP pro bono services in the U.S. To that end, the USPTO has supported the launch of IP pro bono programs of states such as Minnesota, Colorado, and California, and is actively working to develop programs in other states including Michigan. These programs provide initial screening of potential pro bono clients, establish appropriate expectations for prospective pro bono clients and attorneys alike, help define the scope of work, and facilitate matching a pro bono client with an appropriate attorney. This service alone can remove much of the "unknown" that we as IP attorneys fear when speaking with that potential client for the first time.

The Grand Rapids IP Section was recently honored to welcome Mr. John Calvert and Ms. Sue Purvis from the USPTO Office of Innovation Development in Alexandria, Virginia. Their presentation in Grand Rapids, which was also webcast live to a group of IP attorneys in metro Detroit, discussed efforts that are now underway to support the development of Michigan's own IP pro bono program, explained the mechanics and scope envisioned for typical IP pro bono work under this program, and dispelled common misconceptions about pro bono in IP.

We hope that this type of organized effort will open more IP attorneys' eyes to the possibility of IP pro bono, so that they can support such programs and efficiently assist people who can benefit from such expertise while developing our state's knowledge-based economy.