Statewide volunteer Patent Pro Bono initiative secures second patent, more on the way
Securing a patent to protect an idea is time-consuming and expensive.
Just ask Matthew Stephenson, who’s looking to patent his board game Battle Mound, bringing together chance and strategy—with “a measured level of skill.”
He came up with the idea while working 12-hour shifts in a factory manufacturing plastics, spending lunch breaks over the next several years sketching out ideas in his notepad.
After sitting with his idea for a decade, the invention lost momentum.
“I didn’t know what steps to take, how to protect it or how best to proceed,” the 36-year-old Stephenson said. “After exploring my options, I recognized that without some kind of help, my ability to secure a patent—or even just an attorney—was going to be a longshot at best.”
Enter the Case Western Reserve University School of Law’s IP Venture Clinic (IPVC)—where startup companies, entrepreneurs and “garage inventors” throughout Ohio can get free legal service to obtain a patent for their intellectual property (IP).
Stephenson said his participation in the Patent Pro Bono Program for Ohio has “been a shot in the arm, and breathed new life into my project,” noting that an attorney is planning to take on his case.
Under the umbrella of the IPVC, inventors can file and secure a patent, while maintaining attorney/client privilege to keep their ideas legally protected. The program recruits inventors and patent lawyers statewide, matching them based on the invention and an attorney’s expertise.
“It’s tough to get through the gauntlet without help,” said IPVC Managing Attorney Ted Theofrastous. “Inventors do not have the resources or knowhow necessary to prepare and file a patent application and see the complex process through.”
To date, the Pro Bono Program has registered 42 volunteer attorneys and paired 47 inventions with volunteer attorneys.
The expense of securing a patent can be steep for inventors and startups already working with a tight budget. Depending on the complexity of a patent application, attorney’s fees can range from $5,000 to more than $20,000, Theofrastous said.
The pro bono program was created to help inventors with limited resources. To qualify for the service, an inventor’s annual income can’t exceed three times the federal poverty guidelines.
The program has provided more than $160,000 worth of legal aid during the past three years, not including additional legal services for inventions that didn’t get to the filing stage.
The program has received nearly 400 applications from inventors, like Stephenson, with two successfully filed patents and 13 more pending. Last year, the program secured its first patent for an Ohio inventor who developed an ultraviolet lamp for medical purposes.
The second patent was obtained recently to a local health care professional who invented a device to crush pills.
Under the America Invents Act, the U.S. Patent and Trademark Office (USPTO) assists IP law associations nationally that help financially under-resourced independent inventors and small businesses gain access to a registered patent practitioner.
“I honestly don’t know where I would be or what I would do without it,” said Stephenson. “It’s given me new hope and an opportunity where once I could only see more obstacles. I am truly grateful and tremendously blessed to have found this program.”
With primary financial support from the Burton D. Morgan Foundation—funding a range of entrepreneurial programs at Case Western Reserve—as well as the USPTO, the IPVC collaborated with attorneys in other communities nationally to develop and administer a program for Ohio.
The Cleveland Intellectual Property Law Association is also a big supporter of the program.
In the IPVC, law students—working under supervision of law school faculty—represent startup companies and entrepreneurs to help them develop and protect their intellectual assets while providing legal resources.
Several firms have committed to partnerships with the Pro Bono Program including Tarolli, McDonald Hopkins; Renner Otto; and Squire Patton Boggs; and Benesch Law.
“The entire IPVC initiative helps inventors and entrepreneurs, but it also gives our law students valuable, real-life experience in patent law work,” Theofrastous said.
He said he likes Stephenson’s chances.
“Novelty is the touchstone to patentability,” he said. “If you’re really getting started, and you need some guidance, there is no better place than right here.”