Intellectual Property Rights

by Hitha Bollu, PBI Intern

The United States prides itself on being a center for innovation, with much of that innovation coming from smaller enterprises. Small businesses produce over 14 times more patents than large businesses and universities, and employ nearly 40 percent of America’s scientists and engineers. And, of course, even the largest well known innovative firms were once small businesses.

Unfortunately, without protection of their intellectual property, small businesses can find it difficult to attract capital because potential investors know more established businesses could copy the ideas, methods and practices of smaller businesses, and use their greater resources to market more effectively, undercutting the value of innovation to the original innovator. A European study has shown small enterprises are 21 percent more likely to experience a growth period after filing for an international property right. Moreover, according to the United States Patent and Trademark Office (USPTO)around 41 percent of the United States domestic gross product stems from industries that intensively rely on intellectual property protection, and the large majority of companies that apply for patents are small and medium sized enterprises.

However, many small enterprises lack the expertise to obtain effective protection for their innovations and cannot afford outside counsel to help them do so. Furthermore, enforcing intellectual property rights once patents have been obtained can be daunting—costing “around $4 million on average.”

Fortunately, pro bono work plays a vital role in helping small businesses overcome the hurdles they face in protecting their intellectual property, and the U.S. government has stepped in to help lawyers provide such pro bono services to deserving innovators. The USPTO has a pro bono program to match small-time entrepreneurs with pro bono lawyers to protect their inventions. Individual lawyers with training in patent law can offer their services by either signing up for the regional institute or their state’s program. The USPTO Patent Pro Bono Program is a nationally sponsored initiative with more than 125 volunteer patent practitioners, from 23 law firms, who dedicate more than 50 hours of service annually, which has resulted in the filing of more than 250 patent applications in 2021 alone.

The USPTO’s regional and state programs have significantly increased the number of successful cases with individual clients and engaged lawyers from law firms and corporations. For example, through the Ohio Patent Pro Bono Program, innovators were matched with Attorney Robert Schmitt at the Tarolli, Sundheim, Covell & Tummino LLP law firm to obtain a patent for their motion sensor drink idea. On the corporate legal department side, Gail Su, the lead intellectual property transactional counsel at Hewlett-Packard, organized a team of 33 lawyers (and other legal staff) to partner with the California Lawyers for the Arts Pro Bono Program to help small businesses protect their intellectual property. Many of the USPTO programs, including the Ohio Patent Pro Bono Program, support their volunteer attorneys by providing malpractice insurance.

Additionally, there are opportunities for attorneys who are not patent lawyers and other legal staff to contribute meaningfully to these efforts. Many USPTO pro bono programs host pro bono clinics predominantly run by students to further address the needs or concerns of smaller companies related to patent acquisition. For example, the Maryland Intellectual Property Legal Resource Center (MIPLRC) establishes patent-specializing clinics to allow law students to also provide pro bono assistance to smaller high-tech or start-up corporations under the guidance of professional attorneys. The MIPLRC clinic allows volunteer lawyers to work together with students to do pro bono work to help smaller institutions or companies gain patenting rights and add social value to their creations by providing firsthand training to better represent clients in intellectual property issues. The law students primarily offer further aid in issues correlated with nondisclosure forms, licensing, and business entity selection and formation.

While the USPTO Patent Pro Bono Program has partnered with organizations to provide 22 programs nationwide, Kathi Vidal, the president of the USPTO Program, aims to provide more pro bono opportunities for law firms by steadily contacting like-minded organizations to further expand the program as the need for assistance remains great. While the greatest beneficiary of the programs may have been the entrepreneurs that have received assistance,  the legal profession stands to benefit from participating in this work. Beyond personal fulfillment, working to assist entrepreneurs with their intellectual property rights legal needs affords hands-on experience, opportunities to hone client interaction skills, avenues for recruiting law students or obtaining employment, and potential sources of future paying clients, as small businesses grow into thriving entities. PBI urges you to consider participating in this important work.