Volunteer statewide legal service helps inventor protect idea for ultraviolet light-based medical treatments

Protecting an idea or invention can be time-consuming and expensive, involving costly legal fees and navigating a complex patenting process.

But startup companies and entrepreneurs in Ohio can now get free legal service to obtain a patent for their intellectual property (IP) through the Patent Pro Bono Program for Ohio, a program offered by the Case Western Reserve University School of Law’s IP Venture Clinic (IPVC).

The Patent Pro Bono Program recently secured its first patent for an Ohio inventor who is developing an ultraviolet (UV) lamp for medical purposes.

“We hope this patent is the first of many,” said Michael Russell, staff attorney and client coordinator for the law school’s Milton A. Kramer Law Clinic Center IPVC Patent Pro Bono Program. “The entire IPVC program not only benefits entrepreneurs who otherwise couldn’t afford the legal services, but our law students, who gain valuable, real-life experience in patent law work.”

The process of filing a patent application, interacting with the United States Patent and Trademark Office (USPTO) and securing a patent can take years and cost thousands of dollars.  In this case, the Pro Bono Program started working with the inventor (one of dozens in the its system) in 2015. The application was filed by volunteer attorney Roger Johnston, a lawyer with the Cleveland law firm Fay Sharpe.

Under the America Invents Act, the USPTO was directed to establish and support pro bono programs to assist financially under-resourced, independent inventors and small businesses across the country. The program matches inventors with volunteer IP attorneys who donate their services to provide advice and, where possible, file patent applications.

With primary financial support from the Burton D. Morgan Foundation (which funds a range of entrepreneurial programs at CWRU) as well as the USPTO, the IP Venture Clinic at Case Western Reserve’s law school collaborated with attorneys in other communities nationally to develop and administer a program for Ohio. The program will soon become available to Kentucky residents as well.

In the IPVC, law students—working under the supervision of law school faculty—represent startup companies and entrepreneurs to help them develop and protect their intellectual assets while providing legal resources. Entrepreneurial students at Case Western Reserve are among clients who have benefited from the IPVC.

This first patent to come through the IPVC’s Pro Bono program was obtained for Doug DeWalt, an Ottawa Hills, Ohio, resident developing a UV lamp to help people afflicted with psoriasis, a skin disorder, or multiple sclerosis (MS), a neurological disease of the central nervous system.

DeWalt, who started a business, Rayminder, to make and market the lamp, said he hopes the U.S. patent (number 9,592,406) will lead to clinical trials. He also intends to seek U.S Food and Drug Administration approval of the device.

He developed the product in his basement, motivated to explore a remedy for MS when a family babysitter was diagnosed with the disease at age 18. A patent seemed out of the question, due to his lack of expertise in the process and inability to afford a patent lawyer.

DeWalt said he did an online search for patent assistance and learned about the pro bono opportunity at Case Western Reserve. In the program, inventors apply and lawyers willing to volunteer pro bono hours register.

“We wanted to find a way to help local inventors who lack financial means connect with and participate in the regional entrepreneurial economy,” IPVC Managing Attorney Ted Theofrastous said. “Our main goal was to get a system in place to review and cultivate what has turned out to be hundreds of candidates efficiently. We screen them to find out whether they have something that is truly patentable and meet the program’s income requirements. Then we match them up with volunteer IP attorneys who may want to help them.”

Depending on an inventor’s legal needs, a referral could also be made to law students in the IPVC, where they would have access to a broader range of IP and venture representation.

“Our program goes one step toward resolving a difficult Catch-22,” Theofrastous said. “Entrepreneurs without solid intellectual property are likely to struggle raising funds. Meanwhile, these community inventors do not have the financial resources necessary to prepare and file a patent application. The pro bono program attempts to address that conundrum.”

Entering its third year, the program continues to grow and experiment with new ways to connect inventors with volunteers. An example of this was the “Patent Pro Bono Day” at the School of Law earlier this month, where over a dozen volunteer patent attorneys met with pre-screened inventors to review and advance their case. The open session was sponsored by the Cleveland Intellectual Property Law Association, which has actively supported the program since inception.

This article was originally published April 18, 2017.