Free, new PTAB program connects qualifying applicants with patent practitioners in ex parte appeals
It can be difficult to navigate the patent system, a process that can involve proceedings before the Patent Trial and Appeal Board. To help alleviate some of this, the PTAB and the PTAB Bar Association developed a program to connect financially under-resourced inventors with qualified patent practitioners for free legal or “pro bono” assistance in handling ex parte appeals at the PTAB. (Ex parte is a Latin term that means “on or from one side only.”)
This program builds on the success of the USPTO’s Patent Pro Bono Program, which has matched more than 3,400 under-resourced inventors and small businesses with volunteer patent practitioners to file over 1,800 patent applications. This has totaled more than 84,000 hours of free legal help.
Program scope. The PTAB Bar Association serves as the national clearinghouse for the PTAB Pro Bono Program. Initially, the PTAB Bar will match a limited number of qualified inventors seeking ex parte appeal assistance with volunteer practitioners. In the future, there are plans to expand the program to match inventors seeking America Invents Act (AIA) trial assistance with volunteer practitioners.
Inventor eligibility. To be eligible for pro bono assistance, independent inventors must meet certain requirements. They must:
- Be domiciled in the United States;
- Have a gross household income less than three times the U.S. poverty guidelines;
- Establish Micro Entity Status in the application subject to appeal;
- Apply within one month from the date of the Office Action in which claims have been twice or finally rejected; and
- View the required training about the PTAB Pro Bono Program and the ex parte appeal process.
Matching. If an applicant qualifies for the program, the PTAB Bar Association attempts to match the independent inventor with a volunteer practitioner within one month of the application being submitted. For a variety of reasons, including the availability of volunteer practitioners, a match is not guaranteed.
Volunteer practitioner eligibility. To volunteer, patent practitioners must: (1) be a licensed patent attorney or patent agent; (2) have experience in ex parte matters before the PTAB; (3) provide malpractice insurance; (4) provide a representation agreement; (5) have proficiency with the technology at issue; and (6) agree not to charge fees for their representation.
How to apply
The PTAB Pro Bono Program fully launched on June 1, 2022. Interested independent inventors and patent practitioners can access the respective application forms on the PTAB Bar Association website at ptabbar.org.
Independent inventors and patent practitioners with questions regarding the application or matching process may contact the PTAB Bar Association via email at [email protected].