Patent Trial and Appeal Board Pro Bono Program for independent inventors

Inventors, inventor groups, and inventor-owned small businesses who meet certain financial thresholds and other criteria may be eligible for free legal assistance when appearing before the Patent Trial and Appeal Board (PTAB). The PTAB Pro Bono Program matches volunteer patent professionals with financially under-resourced inventors, inventor groups, and inventor-owned small businesses to provide free legal assistance in preparing ex parte appeals to the PTAB.

Recent Changes

As of April 1, 2023, the PTAB Pro Bono Program has been expanded to increase the types of inventors who may receive free legal help. The program originally assisted independent inventors, but with this recent change inventor-groups and inventor-owned small businesses may also qualify for assistance, if certain criteria is met. Also as of April 1, 2023, the PTAB Pro Bono Program has eliminated the eligibility requirement for an inventor to be a micro-entity. This means that an inventor is no longer limited to having three or fewer filed patent applications to be matched with a volunteer practitioner under this program. Further as of April 1, 2023, the PTAB Pro Bono Program has increased the income threshold from 300 to 400% of the federal poverty limit to enable more inventors to financially qualify.

Requirements ( as of April 1, 2023)

The PTAB Pro Bono Program supports solo inventors, inventor groups, and inventor-owned small businesses.

Solo inventor qualifications

To qualify as a solo inventor:

Number of inventors: there must be exactly one known inventor for the invention
Residency: the inventor must reside in the United States
Income: the inventor must have a total household income of less than 400% of the federal poverty guidelines (Modified as of April 1, 2023)
Knowledge: the inventor must demonstrate knowledge of the ex parte appeal process by successfully completing a video training course consisting of two videos. The first video explains how the PTAB Pro Bono Program works. The second video walks through the ex parte appeal process.
Timing: the inventor must apply to the program within one month from the date of an office action in which the claims have been twice or finally rejected.
Ownership interest: the inventor must not be under an obligation to assign (sell or give ownership of) the application or resulting patent to a third party. (New as of April 1, 2023)
~~Micro-Entity Status~~ (Eliminated as of April 1, 2023)

Inventor group qualifications (New as of April 1, 2023)

To qualify as an inventor group:

Number of inventors: there must be no more than four known inventors for the invention
Qualify individually:
- Residency: each inventor must reside in the United States
- Income: each inventor must have a total household income of less than 400% of the federal poverty guidelines
- Knowledge: each inventor must demonstrate knowledge of the ex parte appeal process by successfully completing a video training course consisting of two videos. The first video explains how the PTAB Pro Bono Program works. The second video walks through the ex parte appeal process.
Timing: the inventors must apply to the program within one month from the date of an office action in which the claims have been twice or finally rejected.
Ownership interest: each inventor or the inventor group must not be under an obligation to assign (sell or give ownership of) the application or resulting patent to a third party.

Inventor-owned small business qualifications (New as of April 1, 2023)

To qualify as an inventor-owned small business:

Inventor owned: the small business must be 100% inventor owned
Number of inventors: there must be no more than four known inventors of the inventor-owned business
Assignment to organization: each inventor must agree to assign his/her rights to the business
Qualify individually:
- Residency: each inventor must reside in the United States and the principal place of business of the inventor-owned small business must be in the United States
- Income: each inventor must have a total household income of less than 400% of the federal poverty guidelines
- Knowledge: each inventor must demonstrate knowledge of the ex parte appeal process by successfully completing a video training course consisting of two videos. The first video explains how the PTAB Pro Bono Program works. The second video walks through the ex parte appeal process.
Timing: the inventor-owned small business must apply to the program within 1 month from the date of an office action in which the claims have been twice or finally rejected.
Previous year business income: if the business was operating in the preceding calendar year, the business must have had a total gross income of less than $150,000.
Projected year business income: the business must expect a total gross income of less than $150,000 in the current calendar year.
Ownership interest: each inventor or the inventor owned small business must not be under an obligation to assign (sell or give ownership of) the application or resulting patent to a third party.

How inventors can apply for assistance

The PTAB Bar Association is the clearinghouse for this program. In this role, the PTAB Bar Association (clearinghouse) will review completed applications to determine if the applicant meets the eligibility qualifications and any additional requirements for the program. If the clearinghouse determines that the applicant satisfies all the eligibility requirements, then the clearinghouse will attempt to match the applicant with a volunteer attorney. The clearinghouse itself does not provide legal advice or representation.

The size and scope of this program is limited, and the clearinghouse may not have a suitable volunteer available for every qualified applicant. Qualifying for the program does not guarantee that the applicant will receive representation.

Please visit the PTAB Bar Association for more information on applying for ex parte appeal assistance.

How patent practitioners can volunteer

Registered patent practitioners are critical to the success of the PTAB Pro Bono Program. If you are a patent practitioner interested in volunteering your legal services, please complete an online volunteer application form.

Other USPTO programs

The PTAB Pro Bono Program is separate from the United States Patent and Trademark Office's (USPTO) Patent Pro Bono Program, which provides free legal assistance to under-resourced inventors in filing and prosecuting a patent application for their inventions. Please visit the Patent Pro Bono Program and other assistance programs offered by the USPTO for more information.

Contact the PTAB Pro Bono Program

If you have any questions, please contact the USPTO at PTABprobono@uspto.gov. Please note that the USPTO does not handle the application process or the matching process. Any questions about those topics should be directed to the PTAB Bar Association at PTABprobono@ptabbar.org.

Practitioner recognition

The PTAB Pro Bono Program opened in 2022. Over the past two years, eleven practitioners have volunteered to participate and either offer free legal representation or administer the program. We recognize and appreciate these practitioners, along with their employers, and recognize their support. Participants are listed in alphabetical order by last name.

Volunteer	Law Firm/Company	City & State
Palash Basu	Brownstein Hyatt Farber Schreck, LLP	Washington, DC
Larissa Bifano	DLA Piper, LLP	Boston, MA
Eugene Goryunov	Haynes and Boone, LLP	Chicago, IL
Monica Grewal	Wilmer Cutler Pickering Hale and Dorr, LLP	Boston, MA
Ben Haber	O’Melveny & Myers, LLP	Los Angeles, CA
Steven Kellner	DLA Piper, LLP	Philadelphia, PA
Jessica Li	Fish & Richardson	Redwood City, CA
Jennifer O’Connell	JOC Patent Law PLLC	Raleigh-Durham, NC
Lawrence Pope	LP Patent Law	River Hills, WI
W. Karl Renner	Fish & Richardson	Washington, D.C.
Michael Shepherd	Fish & Richardson	Washington, D.C.