Legal clinics and support

There are four basic requirements that a successful inventor applicant must meet:

1. Be an Idaho individual or small business as defined in the Eligibility Guidelines below.
2. Have a qualifying household income which cannot exceed 300% of federal poverty level for an individual as published annually by the U.S. Department of Health and Human Services. For small businesses, see below.
3. Demonstrate knowledge of the patent system as evidenced by successful completion of the online Certificate Training Course.
4. Demonstrate proof of invention not just an idea. To demonstrate an invention, you should be able to describe the invention so that someone else could actually make and use it. CAUTION: Do not publicly disclose your invention prior to filing a patent application or at least a provisional application for a patent. A public disclosure could make it prior art against itself, resulting in an inability to secure a patent.

Eligibility

Individual inventors may apply if they:

• are U.S. citizens or are lawfully residing in the U.S.;
• are Idaho based;
• have a total household income of less than 300% of the poverty guidelines as published annually by the U.S. Department of Health and Human Services;
• are not currently under an obligation to assign the rights to the invention;  
• have possession of an actual invention, not just an idea; and
• have completed the USPTO online training module.

Small businesses may apply if they:

• are Idaho-based businesses;
• have 4 or fewer inventors, where each inventor has total household income of less than 300% of the poverty guidelines as published annually by the U.S. Department of Health and Human Services;
• had a total gross income of less than $150,000 in the preceding calendar year and expect a total gross income of less than $150,000 in the current calendar year;
• are not currently under an obligation to assign the rights to the invention;  
• have possession of an actual invention, not just an idea; and
• have completed the USPTO online training module.

Other guidelines and limitations for inventors

Past patenting efforts

1. We will not accept applications to handle a case that was started by another attorney.
2. We will not accept an unfiled application that was partially or wholly drafted by another attorney.
3. Pursuant to 37 CFR § 1.29, we will not accept any application where one of the listed inventors has been named on more than 4 previous U.S. patents or pending applications. There is a limited exception for former employees who assigned all rights to a previously issued patent or patents to a former employer.

Inventor’s obligations

1. The inventor is responsible for all official fees. These include the official patent application filing fees due at the time of filing and the issue fee that is due prior to grant of the patent. Other official fees may be included as well.
2. The inventor must promptly respond to all requests for assistance from the attorney (including providing necessary signed paperwork), to prevent the need to pay late fees to the USPTO. If late fees are required because of the timing of a response to such a request from the inventor, the inventor must furnish the fees ahead of time.
3. If drawings are required for a complete understanding of the invention (which is usually the case), preparation of the drawings is the responsibility of the inventor. If a professional draftsman is required, the inventor is responsible for any drafting fees.

Attorney’s services

1. The attorney will attend to drafting and filing one non-provisional U.S. patent application.*
2. The attorney will prosecute the patent application at the USPTO until either (i) a response is filed to a final office action, or (ii) the application issues as a patent.*
3. The attorney is not responsible for requests for continued examination, appeals, challenges to USPTO decisions in a court of law, prosecution after the events listed in (b), foreign patent applications, international patent applications or additional U.S. patent applications.
4. The attorney’s services may be expanded by mutual agreement between the inventor and the attorney, which should be in writing.
5. The attorney will require no attorney fees or paralegal fees for the listed services, but may require prepayment of outside costs such as government filing fees.
6. The attorney may only withdraw from representation if allowed to do so under the applicable ethical rules.

*Some of the volunteer attorneys will perform novelty or prior art searches only.  In those cases, we will attempt to also match accepted applicants with a volunteer  attorney who will complete the services listed in paragraphs 1 and 2 above.

The services provided under the Idaho Patent Pro Bono Program are designed to be flexible —accommodating the needs of both the volunteer attorney and the inventor. In general, services are focused on the initial preparation, filing and prosecution of a patent application before the USPTO.

Commitments undertaken by volunteer attorneys

Volunteer attorneys are expected to commit to do the following:

1. Draft and file one non-provisional U.S. patent application.*
2. Prosecute the patent application at the USPTO until either (i) a response is filed to a final office action, or (ii) the application issues as a patent.*
3. Monitor and docket all deadlines.
4. Prepare a written engagement letter signed by both the attorney and the inventor.
5. Provide a copy of the signed engagement letter to the Idaho Patent Pro Bono Program.
6. Withdraw from a representation only if allowed to do so under applicable ethical rules.

* Some of the volunteer attorneys will perform novelty or prior art searches only.  In those cases, we will attempt to also match accepted applicants with a volunteer attorney who can assist them.  

Additional considerations for volunteer attorneys  

• The volunteer attorney is not responsible for requests for continued examination, appeals, challenges to USPTO decisions in a court of law, prosecution after issue or response to final office action, foreign patent applications, international patent applications, or additional U.S. patent applications.  
• The volunteer attorney's services may be expanded beyond the scope defined by the Program by mutual agreement between the inventor and the volunteer attorney, which should be in writing.
• Volunteer attorneys will be matched with inventors or small businesses based on the field of the invention and the preferred technical fields of expertise of the volunteer attorney. All matches are subject to satisfaction of conflict checks.

Idaho State Bar pro bono information

The Idaho Supreme Court, the U.S. District Court for the District of Idaho, and the Idaho State Bar created the Idaho Pro Bono Commission to increase pro bono participation by private and public sector attorneys through various initiatives, including the Idaho Volunteer Lawyers Program (IVLP).

Volunteer Attorneys under the Idaho Patent Pro Bono Program are encouraged to complete IVLP’s Pro Bono Pledge form (in addition to the Voluntary Attorney Form) to take advantage of the many IVLP benefits that currently include malpractice coverage and other benefits. Contact IVLP for more details.

• Solo inventors: Click here to complete the application.
• Small businesses: Click here to complete the application.
• Volunteer attorneys: Click here to complete the form to participate.

You may find it useful to conduct a novelty or prior art search to help refine your idea and assist the volunteer attorney.  See the USPTO’s Seven Step Strategy.  

Additional USPTO resources for inventors can be found here.