Volunteer Attorney: Patent Pro Bono Program


Part 5 of Patent Pro Bono Program Series

Published on Jun 06, 2018

An interview with an attorney on how to apply to volunteer and what to expect.


Patent Pro Bono Program Series

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We are fortunate today to have a volunteer
attorney here to speak with us about his experiences

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in the Pro Bono Program.

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Hi, I'm Ben Fernandez, and I'm a volunteer
attorney with Probopat Colorado.

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So why did you decide to volunteer for a patent
pro bono program?

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I decided to volunteer for ProBoPat Colorado
because I had been involved in some pro

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bono activity before and that was mainly working
with asylum applications in an immigration

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process.

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And I realized that there are not many avenues
for patent attorneys to pursue pro-Bono endeavors,

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so I actually co-founded the program in Colorado
along with some colleagues who formed a steering

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committee.

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And we ended up creating for opportunities patent
attorneys to help low-income inventors.

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Patent attorneys, unfortunately, are very
good at one thing, and they hesitate sometimes

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to get involved in another pro bono opportunities.

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So this was the perfect opportunity for people
who are patent attorneys and would like to meet

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their pro bono commitments.

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How'd you learn about joining the program?

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Well for Colorado, there's a website at the
Mi Casa Resource Center, as well as the IP

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section at of the Colorado bar association.

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They have links where you can fill out a one-page
volunteer interest form, submit it and as

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a case becomes available they email you, and
you check conflicts, and you determine if

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this a potential good fit.

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And there are also resources available from
the Federal Circuit Bar Association to connect

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people with the programs in each state; every
state has a different program.

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So, what does a volunteer attorney do when
they get matched with an inventor in the program?

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Step one for me in taking in taking a new
case was getting an email with the name of

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the applicant, and a brief description about
the title of the invention, kind of a one

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sentence description.

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That allowed me to check conflicts at my firm,
like I would for any other potential client.

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And that allowed me to decide whether I want,
was interested in meeting with the applicant

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so at that point is the process I did the normal
conflicts check.

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I replied to the administrator at ProBoPat
and accepted.

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At that point, ProBoPat matched me with the
applicant.

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Once the matching occurs, I had a meeting
with the applicant and sat down with them

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in my office, and talked about the potential
representation, and we decided to move forward

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with an engagement letter.

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ProBoPat provided a form engagement letter,
and also allows people to use their own firm's

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pro bono engagement letters.

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So that's how we got the process started
in my case.

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So, you're not required to take a pro bono
case?

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Volunteers in Colorado are not required to
take any particular case.

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Once you sign up as a volunteer, you go on
to the volunteer roster, and as cases become

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available, you get an email with the name
of the applicant, and the conflicts information.

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When I've done this, I check conflicts as
I would for any other client.

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And at that point, I notify ProBoPat of my
interest in the case.

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ProBoPat then sends an email to me and also
the applicant inventor, and then we arrange

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a meeting.

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And at that point in the process, it's up
to me and the inventor to meet and decide

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if an engagement would be the right fit for
both of us.

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However, every program is different in each
state.

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So its important to check with each state's
Pro Bono program to determine what the requirements

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are for volunteering, as well as the process
for matching with applicants.

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How do you handle the confidentiality between
the client and the attorney?

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A lot of applications and inventors ask about
confidentiality, I've actually had some people

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ask me to sign a non-disclosure agreement,
and I always assure them that when you're

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meeting with a volunteer attorney, that's really
not necessary.

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I explain to them the professional duties
that we have in representing clients and in

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meeting with potential clients, and that
usually gives them a certain level of comfort.

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So, the short answer is that confidentially
is handled with the Pro Bono Patent program,

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just as it would be with any other client that
I'm representing, or I'm considering representing.

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Confidentiality is very important to us as
volunteer attorneys, and we take steps to

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not only protect the applicants from potential
disclosure, but we also treat it with the

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same level of professional care as our paying
clients.

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How much time do you usually spend on a pro
bono case?

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So, the amount of time that a volunteer attorney
usually spends on a pro bono patent case varies

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just as it would for our other cases.

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But generally, I spend the same amount of
time drafting a patent application, or provisional

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patent application, that I would spend for
a non-Pro Bono client.

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So, over all that has your experience been
with the Pro Bono program?

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So my overall experience volunteering for
the Pro Bono Patent program has been overwhelmingly

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positive.

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It's been something that's been fun for me
to do.

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It's been something that has been very rewarding.

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I think the applicants have been very thankful,
appreciative, very differential, and very

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easy to work with.

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As a volunteer in the Pro Bono Patent program
I seen a wide range of technologies that the

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applicants have signed to protect. It allows
the volunteers to kind of branch out for a

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little bit and maybe work on a type of technology
or a type of application that they might not

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see in their normal practice.

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For example we have some volunteers who are
biotech life sciences people, and they might

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be helping someone with a new device that
accomplishes a household tasks for example,

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so it allows people to branch out.

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The program is also great for allowing volunteers
to work together, so that you might have a

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more experienced professional working with
less experienced patent attorney.

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And both of them get to work together and
kind of lean about the process together, and

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it can be great mentoring tool in that way.

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Would you recommend this Pro Bono program
to all attorneys?

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I would highly recommend this Pro Bono Patent
program to other volunteers.

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It's difficult as a patent attorney to find
Pro Bono opportunities.

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I know in my state we are encouraged to spend
at least 50 hours a year on Pro Bono programs.

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And its difficulty to for Patent Attorneys
to find Pro Bono work in the IP area.

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It does exist, but its hard to find and so,
this is a great opportunity to get some Pro

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Bono exposure in the area where you're already
somewhat comfortable, you feel like you kind

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of know what you are doing.

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This not to take away from other Pro Bono
endeavors that focus on human rights issues,

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and other more traditional Pro Bono issues.

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But on the another hand. Pro Bono Patent programs
provided a great way for people who are not

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doing much pro bono work to get involved in
a way they are comfortable with.

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Thank you so much for your time and the great
work that you're doing.