PTAB Pro Bono Program Launches

On March 24, the United States Patent and Trademark Office (USPTO) announced that the Patent Trial and Appeal Board (PTAB) Pro Bono Program had officially launched. The PTAB Bar Association, which serves as the national clearinghouse to connect volunteer patent practitioners with eligible inventors, began accepting inventor applications on June 1. The PTAB Pro Bono Program fills a major gap in pro bono patent practice, and Fish & Richardson P.C. is excited to work with both the USPTO and the Association in their efforts toward creating a more equitable patent system.

Program Overview

Securing patent protection as an independent inventor often requires surmounting significant legal and financial hurdles, with post-grant matters having taken an increasingly central role in long-term patent planning over the past decade. While the USPTO offers several patent-related legal assistance programs, they have never before extended to appeals or post-grant matters before the PTAB. The PTAB Pro Bono Program fills that gap by matching volunteer patent professionals with financially under-resourced inventors. The program will begin with ex parte appeals and expand to America Invents Act (AIA) trials in the coming years.

To be eligible to participate in the program, an inventor must:

• Be domiciled in the United States
• Have a gross household income of less than three times the federal poverty guidelines
• Have a certification of micro entity status in the patent application that is the subject of the appeal
• Not otherwise be represented by a practitioner in the PTAB proceeding
• Apply to the program within one month from the date of the Office Action at issue
• Demonstrate knowledge of the ex parte appeal process by completing a two-part video training course

Practitioners who would like to volunteer for the program must meet the following requirements:

• Be a licensed U.S. attorney or patent agent
• Have experience with the technology and the type of proceeding
• Provide malpractice insurance
• Agree to not charge a fee for the services
• Provide a representation agreement

When the PTAB Bar Association receives an application from an inventor, it will enter the information into its database and contact its pool of volunteer attorneys to find those with experience in the inventor's field of technology. If there are matches, it then coordinates meetings between the practitioners and the inventor to determine whether the representation is a good fit. Once inventor and practitioner are matched, the Association's role shifts to monitoring and evaluating the overall success of the representation, as well as collecting data and establishing best practice for future representations.

How It Came About

The PTAB Pro Bono Program is the result of an extensive and collaborative effort among the leadership of the PTAB and the Association, as well as numerous industry stakeholders. The idea for the program initially arose when leadership of the PTAB proposed the creation of a legal assistance program specifically geared toward post-grant matters. In a process extending nearly a year, then-Association President Karl Renner, Past President Steve Baughman, and Vice President Monica Grewel (collectively, the PTAB Bar Association Pro Bono Steering Committee) held periodic meetings with members of PTAB leadership, including Vice Chief Judge Gongola, Lead Judge Stacey White, Chief Judge Scott Boalick, and Deputy Chief Jackie Bonilla, to establish a working relationship and to explore how the Association could best support and administer the program.

Working together, this team worked out the details of the program's policies, procedures, and operations. As a pro bono legal assistance program, a key concern was ensuring that the program would effectively reach the people it was designed to serve. Among the significant hurdles was ironing out the logistics of performing the clearinghouse function. But once the vision was resolved, Association and PTAB leadership, along with PTAB Patent Attorney Detailees Grant Corby and Brandy Zukanovich, worked tirelessly and hand-in-hand to get the program off the ground with astonishing speed. In these efforts, PTAB Bar Association Technology Committee Chair Eugene Goryunov contributed significantly, enabling the clearinghouse functionality on the Association's website.

The program was officially announced at the Association's 2022 Annual Conference in Washington, D.C., where it made an immediate splash, garnering over 20 volunteers its first day.

Filling an Important Gap

The early surge of interest in the PTAB Pro Bono Program among practitioners serves as a reminder of the important gap the program fills. For under-resourced or inexperienced inventors, PTAB proceedings are often intimidating and can place a hefty burden on their ability to practice their inventions. For practitioners, the program presents a unique opportunity. While patent attorneys routinely engage in pro bono activities in a wide range of legal practices, few pro bono programs are specifically designed to take advantage of their true strengths in patent law. The PTAB Pro Bono program gives patent attorneys - most importantly young and diverse attorneys - an opportunity to fulfill a public need while doing something they love.

Looking Forward

The PTAB Pro Bono Program is in its early days, making it difficult to speculate on what its true impact will be. But as post-grant matters continue to make up an ever-larger component of patent practice, it will have an increasingly important role to play as it grows and matures. At Fish, we believe we have an obligation to share our resources with the community to drive innovation forward, and we are excited to continue doing that work through the PTAB Pro Bono Program.