WHAT DOES PATENT PRO BONO FL & PR DO?

Can Patent Pro Bono FL & PR help me with my invention?

With the assistance of the United States Patent and Trademark Office (USPTO) and the America Invents Act, and in collaboration with firms and attorneys throughout FL & PRorida and Puerto Rico, Patent Pro Bono FL & PR is a program of the Arts & Business Council of Miami and Dade Legal Aid to provide under-resourced inventors with pro bono patent attorneys to review and file patent applications. We serve FL & PRorida and Puerto Rico. We can help qualifying applications in these areas .

  • Solo inventors in FL & PRorida and Puerto Rico
  • Small business/inventor groups in FL & PRorida and Puerto Rico
  • Nonprofits in FL & PRorida and Puerto Rico

Who can apply for Patent Pro Bono FL & PR?

Patent Pro Bono FL & PR is open to 3 classes of inventors: 1) Solo Inventors; 2) Non-Profits; and 3) Small Businesses/Inventor Groups. Each class has certain criteria that must be met in order to qualify for the program.

Solo Inventors Qualifications:

  1. You must be a resident of FL & PRorida or Puerto Rico
  2. You must have a total combined household income of less than 300% of the federal poverty guidelines. Click the following link to check the current year's guidelines aspe.hhs.gov Inventors will be asked to send a current W2 form to show household income.
  3. You must not currently be under an obligation to assign (sell or give ownership of) the patent rights to a third party

Non-Profit Qualifications

  1. The organization must be either a FL & PRorida or Puerto Rico domestic corporation with 501(c)(3) status
  2. The organization must have a budget of less than $1 million per year, organizations will be asked to send a copy of their current IRS 990 form to confirm financials
  3. The organization cannot be research institutions or institutions of higher learning
  4. There must be no more than 4 inventors to be listed on the patent application
  5. The inventors must assign (sell or give ownership of) the patent rights to the non-profit organization
  6. The organization must not currently be under any obligation to assign (sell or give ownership of) the patent rights to another entity

Small Businesses/Inventor Groups Qualifications:

  1. There must be no more than 4 inventors to be listed on the patent
  2. All inventors must individually meet the financial requirements for solo inventors; (see requirements under individual) Each inventor must submit a current W2
  3. Under most circumstances, all inventors must be under an obligation to assign the patent rights to the “business”
  4. For businesses already formed, the business must have had a total gross income of less than $150,000 in the preceding calendar year
  5. Businesses must expect a total gross income of less than $150,000 in the current calendar year, business will be ask to send current IRS filings
  6. The business or group must not currently be under any obligation to assign (sell or give ownership of) the patent rights to another entity

What is the inventors responsibility?

Not all inventions are patentable. There are full descriptions and resources for some of these requirements in the next section. Before being matched with a pro bono attorney the applicant must:

  • Complete application and apply
  • Send required financial documents and attachments
  • Conduct a Prior Art Search
  • Provide proof of income – a recent tax return is preferred
  • Certificate of Completion of USPTO’s patent pro bono training module
  • Invention must be “reduced to practice

What happens next?

Once you complete the online application form, our staff will review your answers and send you an intake letter within a reasonable period of time. The intake letter will provide detailed information on the required attachments. You will be asked to provide financial documents, your certificate that you have completed the USPTO online training and proof of your Prior Art Search. When we receive all the required documents we can determine if you qualify for the program. Before submitting an application to the Patent Pro Bono FL & PR program, applicants must read all the information contained in the tabs below. Failure to meet any of the required standards will result in non-admission to the program. Placement with a volunteer patent agent/attorney is at the sole discretion of the program administrators.


How long does the process take?

Here is an idea of the timeline:

  • The length of the entire process varies from client to client and depends on responsiveness of the client. After applying online you will be emailed an intake letter with detailed information on required documents to attach and return. You need to return the required documents to us before we can activate your application.
  • The placement process depends on your invention type and the availability of attorneys for that subject matter. Once your application is approved, expect to wait 6 to 8 weeks for placement with a volunteer patent attorney.
  • If your idea or invention is patentable, expect the patenting process to take from one year to several years to complete.

What are the Fees?

Patent Pro Bono FL & PR offers pro bono legal assistance in the form of a free pro bono attorney to help inventors in FL & PRorida and Puerto Rico to file patent applications. There is a $50 administrative fee to apply. The inventor is responsible for all applicable fees owed to the United States Patent & Trademark Office during the prosecution process. Drafting fees are sometimes necessitated by complex inventions or designs. These fees are the inventors responsibility.


PATENT TRAINING

Prior to applying for pro bono services, each inventor must participate in an approved patent training seminar or demonstrate he/she has been a named inventor on another patent. Print the final completion certificate (or take a picture of it) and scan so you can email to us with your application.

Where can I get the necessary training? The USPTO offers the required module free on their website.

Click Here for English Click Here for Spanish

PRIOR ART SEARCH

Prior to applying you must conduct your own prior art search and find a reasonable number of close references. You must find 3 to 10 of the closest references. This is a mandatory requirement for the Patent Pro Bono program. Take your prior art search seriously. There is always some prior art out there, and we will ask you how you conducted your search.

Why are Prior Art references important? Under the Patent Law, “upon taking up an application for examination . . . the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. Essentially, if your invention is disclosed anywhere in the prior art, it is not patentable.


What is Prior Art?

“Prior Art” encompasses all existing information, knowledge, and references existing anywhere in the world prior to filing a patent. Of course, not all prior art matters. When patent agents and attorneys talk about “prior art,” they are referring to the following, in relation to your particular invention:

  • Prior Patents (U.S. or Foreign)
  • Published Articles
  • Public Demonstrations; and Other Public Disclosures

How do I search for Prior Art?

A great place to start is to look through existing patents. You may do so on the USPTO’s website: https://www.uspto.gov/patents-application-process/search-patents, the European Patent Office website: https://www.epo.org/searching-for-patents.html, or by using Google Patents. A well-done search should reveal similar inventions, including those inventions upon which your own invention likely relies. More importantly, the prior art search should help educate you, as the inventor, as to the current state of your particular field. If you can not show at least three references your invention is probably not patentable.


How do I search for Prior Art?

A great place to start is to look through existing patents. You may do so on the USPTO’s website: https://www.uspto.gov/patents-application-process/search-patents, the European Patent Office website: https://www.epo.org/searching-for-patents.html, or by using Google Patents. A well-done search should reveal similar inventions, including those inventions upon which your own invention likely relies. More importantly, the prior art search should help educate you, as the inventor, as to the current state of your particular field. If you can not show at least three references your invention is probably not patentable.


European? Why do I need to search that?

The USPTO considers all prior art globally, not just applications, patents, and other descriptions from the United States. Many companies around the world file patents with the EPO, and many of these are in English, or translated into English. We recommend searching through applications and patents separately.


Why 3 to 10 references?

If you have found less than 3 references, you likely are not searching effectively. If you find more than 10, you are likely not searching efficiently. Too few references suggest you have not truly explored the prior art. Too many means that you do not necessarily understand the bounds of your invention, or your invention is likely already a part of the prior art.


How can I get help?

USPTO has four Patent and Trademark Resource Centers in FL & PRorida and two in Puerto Rico. The Patent and Trademark Resource Centers can teach you how to do an effective and efficient patent search. The library websites have numerous tutorials, and the coordinators runs regular patent search classes throughout the year. After attending a class, the librarian may be available for individual consultation on an appointment basis. Patent Pro Bono FL & PR is not directly affiliated with the Patent and Trademark Resource Centers, so if you are interested in consultation with the center, contact them directly.


FL & PRORIDA PATENT AND TRADEMARK RESOURCE CENTERS

Miami-Dade: Miami-Dade County Main Library Call: 305-375-2665 or email hinzes@mdpls.org
Ft Lauderdale: Broward County Main Library Call: 954-357-7444
Orlando: University of Central FL & PRorida Libraries Call: 407-823-2562 or visit them online at guides.ucf.edu/patents
Gainesville: Patent Resource Center at University of FL & PRorida Library Visit online at guides.uFL & PRib.uFL & PR.edu/patents


PUERTO RICO PATENT AND TRADEMARK RESOURCE CENTERS

Bayamón: Learning Resource Center, Bayamón Campus, University of Puerto Rico Call: 787-993-0000 ext. 3222
Mayagüez: General Library, Mayagüez Campus, University of Puerto Rico Call: 787-832-4040 ext. 5775


ADDITIONAL RESOURCES

Step by Step video from USPTO

7 Steps to US Patent Search PDF from USPTO

Required: Must send at least 3 prior art references detailed in your intake letter after you apply


REDUCE TO PRACTICE

Prior to applying for pro bono services, you must have a good faith belief that your invention constitutes novel and non-obvious patentable subject matter that has been reduced to practice.


What does "novel" mean?

  • The inventor was first to invent or discover the invention or improvement.
  • The invention or improvement must not be patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date.

What does "non-obvious" mean?

The differences between your invention or improvement and another patented invention must not be obvious to a person of ordinary skill in the relevant field. Essentially, this requirement prevents the issuance of patents for normal development or expansion and rewards those who create and innovate within the field. This is also referred to as "the inventive step.”


Patentable Subject Matter

  • Ornamental Designs
  • Asexually Reproduced Plants
  • Processes
  • Machine
  • Article of Manufacture
  • Composition of Matter
  • Improvement of one of the above

What does "reduce to practice" mean?

"Conception is the touchstone of inventorship, the completion of the mental part of invention." Hybritech Inc. v. Monoclonal Antibodies, Inc. (quoting Robinson On Patents). Patent protection does not extend to vague concepts or ideas; the concept or invention must be "reduced to practice" before you can apply for a patent. Reduction to practice can occur in 2 ways:

  1. By creating a working prototype; or
  2. By describing the invention in sufficient detail such that a person with ordinary skill in the relevant field could create a working prototype.

An idea is definite and permanent when the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan he hopes to pursue. The conception analysis necessarily turns on the inventor’s ability to describe his invention with particularity. Until he can do so, he cannot prove possession of the complete mental picture of the invention. Burroughs Wellcome Co. v. Barr Laboratories Inc.

Required: Must send be able to show the attorney you are matched with that you can :Reduce to Practice” your invention.

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