Patent Pro Bono GOYB PowerPoint

Report
Richard Linn Inn of Court
November 28, 2012
IP Pro Bono Opportunities
for Chicago-Area Attorneys
Introduction
• Skit presentations, source materials, contact info
o What opportunities are presently available that focus on IP pro bono?
• Law School Clinics
• LCA
• National Development of Patent Pro Bono
o Why might Inn members get involved (or continue their involvement)
in pro bono services?
o How might Linn Inn members participate in
Chicago patent pro bono program planned for launch in 2013?
• Program Development
o Policy
o Process
o Publicity and Fundraising
• Volunteer Attorney
Introduction Vignette
Wherein we meet …
ARTIST considering her legal options
and
CORPORATE IP ATTORNEY considering
options for pro bono legal service
•
ARTIST and ATTORNEY meet and discover the other’s respective interests:
• Artist: “I really need a lawyer to give me some advice on a new
paint I’ve created, how to protect it and sell it (and the paintings I’ve
created with it), but the problem is that I can’t afford a lawyer.”
• Attorney: “I’ve been meaning to look into volunteering to help
financially challenged artists or inventors, but I’m not really sure
what’s out there. I have heard that some of our local law schools
have legal clinics. I’d start there.”
Skit 1: Law School Clinics
Wherein we see Artist’s meeting at clinic…
… and we learn about
• Local law school clinics
o Entrepreneurship Clinics
o Non-Patent IP Clinics
o JMLS Patent Clinic
• Ethics implications of
o Scope of Representation (Rule 1.2)
o Responsibilities of Supervisory Attorney (Rule 5.1)
o Responsibilities Regarding Non-Lawyer Assistants (Rule 5.3)
• Interested?
o Contact one of our several local law schools regarding their IP clinics,
need for adjunct professors, or other opportunities to get involved
Skit 2: LCA
Wherein we see IP Law Firm Attorney visit the LCA…
… and we learn about
• LCA services
• Ways volunteer attorneys are involved
o Volunteer representation
o Fundraising
Pro Bono Legal Service for the Arts
http://www.law-arts.org/
Information Presented with LCA Approval
213 W. Institute Pl #403
Chicago, IL 60610
Ph: (312) 649-4111
Information Presented with LCA Approval
Information Presented with LCA Approval
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1.) Business Contracts/Documentation
Entity Formation/Contract Drafting
Clients, a writer/producer and performing artist,
developed a unique multi-media live performance
show that combines literary work, music, visual art
and motion pictures. The show explores human
knowledge on various obscure topics, often
chosen from encyclopedias. Clients seek help
choosing an appropriate business structure and
negotiating an agreement with a partner.

2.) Intellectual Property Litigation

Copyright Use Litigation
Client wrote a song played in connection with a
major holiday. Client permitted the founder of a
local festival to use the song for promotional
purposes for several years. But, a local radio
station took over the festival and continues to use
Client’s song in various radio spots, in addition to
the festival. Client would like help resolving this
matter, potentially by filing a complaint.
Trademark Use Litigation
Client has a registered trademark for sports
apparel that includes two words and an image.
Several years ago, Client successfully settled a
case against another sports apparel company. He
seeks advice regarding the merits of claims
against two additional sport apparel companies.
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3.) Copyright/Trademark Prosecution
Trademark Prosecution
Client, an actor, vocalist and dancer, seeks advice
on protecting his unique stage name through
trademark registration and general advice
regarding performance contracts and use of his
name, voice and/or likeness under the Illinois
Right of Publicity Statute.
Intellectual Property Protection
Client, an artist and inventor, has created a new
kind of paint. Client has used the new paint to
create several paintings. She would like advice and
assistance in protecting her rights in both the new
kind of paint and her paintings, through a patent
application and a copyright registration,
respectively.
Information Presented with LCA Approval
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

1.) Business Contracts/Documentation
Entity Formation/Contract Drafting
Clients, a writer/producer and performing artist,
developed a unique multi-media live performance
show that combines literary work, music, visual art
and motion pictures. The show explores human
knowledge on various obscure topics, often
chosen from encyclopedias. Clients seek help
choosing an appropriate business structure and
negotiating an agreement with a partner.

2.) Intellectual Property Litigation

Copyright Use Litigation
Client wrote a song played in connection with a
major holiday. Client permitted the founder of a
local festival to use the song for promotional
purposes for several years. But, a local radio
station took over the festival and continues to use
Client’s song in various radio spots, in addition to
the festival. Client would like help resolving this
matter, potentially by filing a complaint.
Trademark Use Litigation
Client has a registered trademark for sports
apparel that includes two words and an image.
Several years ago, Client successfully settled a
case against another sports apparel company. He
seeks advice regarding the merits of claims
against two additional sport apparel companies.



3.) Copyright/Trademark Prosecution
Trademark Prosecution
Client, an actor, vocalist and dancer, seeks advice
on protecting his unique stage name through
trademark registration and general advice
regarding performance contracts and use of his
name, voice and/or likeness under the Illinois
Right of Publicity Statute.
Intellectual Property Protection
Client, an artist and inventor, has created a new
kind of paint. Client has used the new paint to
create several paintings. She would like advice and
assistance in protecting her rights in both the new
kind of paint and her paintings, through a patent
application and a copyright registration,
respectively.
Information Presented with LCA Approval
Skit 3: Patent Pro Bono
Wherein
CORPORATE IP ATTORNEY interested in pro bono work
meets with
MENTOR ATTORNEY involved in pro bono work…
… and we learn about
o
o
o
o
o
Why attorney might want to get involved
Concerns about undertaking pro bono work
What types of IP pro bono opportunities available in Chicago area
Development of Chicago-area Patent Pro Bono program
How to sign up to get involved in various pro bono programs
IARDC: Annual Registration
(a) Did you, within the past 12 months, provide any pro bono legal services as
described in subparagraphs (1) through (4) below? ____ Yes ____ No
o If no, are you prohibited from providing legal services because of your employment?
____ Yes ____ No
o If yes, identify the approximate number of hours provided in each of the following
categories where the service was provided without charge or expectation of a fee:
(1) hours of legal services to a person/persons of limited means;
(2) hours of legal services to charitable, religious, civic, community, governmental or
educational organizations in matters designed to address the needs of persons of limited
means;
(3) hours of legal services to charitable, religious, civic or community organizations in
furtherance of their organizational purposes; and
(4) hours providing training intended to benefit legal service organizations or lawyers
who provide pro bono services.
Legal services for which payment was expected, but is not collectible, do not qualify as pro bono services and should not be
included.
(b) Have you made a monetary contribution to an organization which
provides legal services to persons of limited means or which contributes
financial support to such organization? ____ Yes ____ No
o If yes, approximate amount: $_____.If yes, approximate amount: $_____.
Illinois Rules of Professional Conduct
Preamble
It is also the responsibility of those licensed as officers of the court to use their
training, experience, and skills to provide services in the public interest for
which compensation may not be available. It is the responsibility of those
who manage law firms to create an environment that is hospitable to the
rendering of a reasonable amount of uncompensated service by lawyers
practicing in that firm. Service in the public interest may take many forms.
These include but are not limited to pro bono representation of persons
unable to pay for legal services and assistance in the organized bar’s efforts
at law reform. An individual lawyer’s efforts in these areas is evidence of the
lawyer’s good character and fitness to practice law, and the efforts of the
bar as a whole are essential to the bar’s maintenance of professionalism. To
help monitor and quantify the extent of these activities, and to encourage
an increase in the delivery of legal services to persons of limited means, Illinois
Supreme Court Rule 756(f) requires disclosure with each lawyer’s annual
registration with the Illinois Attorney Registration and Disciplinary Commission
of the approximate amount of his or her pro bono legal service and the
approximate amount of qualified monetary contributions. See also
Committee Comment (June 14, 2006) to Illinois Supreme Court Rule 756(f).
Why Pro Bono?
“Every lawyer
has a professional responsibility
to provide legal services
to those unable to pay”
A.B.A. Model Rules of Prof’l Conduct R. 6.1
Professional Creed
As a member of an American Inn of Court, I hereby adopt this professional creed with a pledge to honor its
principles and practices:
•
I will treat the practice of law as a learned profession and will uphold the standards of the profession with
dignity, civility and courtesy.
•
I will value my integrity above all. My word is my bond.
•
I will develop my practice with dignity and will be mindful in my communications with the public that what is
constitutionally permissible may not be professionally appropriate.
•
I will serve as an officer of the court, encouraging respect for the law in all that I do and avoiding abuse or
misuse of the law, its procedures, its participants and its processes.
•
I will represent the interests of my client with vigor and will seek the most expeditious and least costly solutions to
problems, resolving disputes through negotiation whenever possible.
•
I will work continuously to attain the highest level of knowledge and skill in the areas of the law in which I
practice.
• I will contribute time and resources to public
service, charitable activities and pro bono work.
•
•
I will work to make the legal system more accessible, responsive and effective.
I will honor the requirements, the spirit and the intent of the applicable rules or codes of professional conduct
for my jurisdiction, and will encourage others to do the same.
Why Not Pro Bono?
1. Competence?
2. Conflicts?
3. Malpractice Issues?
4. Overworked?
5. Concerns about scope of
representation?
6. Market Solution for Financially
Challenged Inventors?
Who Pro Bono?
Competence
“A lawyer shall provide
competent representation to a
client.”
• Legal Knowledge
• Skill
• Thoroughness
• Preparation
• Reasonably Necessary for Representation
A.B.A. Model Rules of Prof’l Conduct R. 1.1
Competence
• Fewer competency concerns for pro bono
representation in area of an attorney’s daily
practice
• Outside an attorney’s daily practice,
competence can be achieved. An attorney is
ethically responsible for adequate preparation,
training and/or supervision by or coordination
with counsel with expertise in the field to
address the legal matter.
• Holland v. Florida, 130 U.S. 2549, 2564-65 (2010)
• Comment on Rule 1.1
Conflicts
Conflicts may preclude or
limit pro bono matters
that may be undertaken.
Consent may be required.
• Former/current clients
• Technical subject matter
• Personal conflicts
• Employer policies
Illinois Rules 1.7, 1.8, 1.9, 1.10, 1.16.
See also 6.2, 6.5 and comments.
Malpractice
• Employer
• Pro Bono or Legal Clinic
Overworked Already?
Duty of Diligence
A lawyer’s work load must be controlled so that each
matter can be handled competently
Illinois Rule Prof’l Conduct 1.3, Comment.
A lawyer should not accept representation in a matter
unless it can be performed competently, promptly, without
improper conflict of interest and to completion. Ordinarily,
a representation in a matter is completed when the
agreed-upon assistance has been concluded.
Rule 1.16 Comment.
See Rules 1.2(c) and 6.5. See also Rule 1.3, Comment [4].
Where Pro Bono?
•
•
•
•
Legal Clinics
Law School Clinics
LCA
Patent Pro Bono Program
o Under development
o Target date 2013
Who is involved in
developing Chicago area’s
patent pro bono program
•
•
•
•
Assistance from PTO
FCBA Nationwide Clearing House
Linn Inn, IPLAC and others
You?
Conclusion Vignette
Artist and Volunteer Attorney meet again…
Coming full circle, Artist and Attorney meet again at some
point in 2013 – this time to begin attorney’s representation
as a volunteer attorney for the then-developed Chicago
Patent Pro Bono Program. Attorney is newly assigned to
assist Artist with patent application on new paint.
Did you, within the past 12 months, provide any pro bono
legal services (as described in the IARDC registration form):
x! Yes ____ No
AIA Patent Pro Bono
Program Development
2011 – Minnesota pilot program (6/11/2011)
(First client signed within minutes of
AIA signing)
20 clients, 2 issued patents
2012 – Five additional programs established
CA, CO, TX, DC metro area, NYC metro area
Nationwide Clearing House
2013 – An additional ten programs
2014 – Final regional programs established
PTO: http://www.uspto.gov/aia_implementation/programs.jsp#heading-1
Pro Bono
The AIA directs the USPTO to work with intellectual property law associations across the
country in order to establish pro bono programs for financially under-resourced inventors
and small businesses. A pilot program in Minnesota was launched in June of 2010 to
provide legal services to help such individuals and businesses obtain solid patent
protection. Using the Minnesota pilot program as a model, the USPTO has contacted
numerous law associations across the country to assist in putting together additional pro
bono programs. As a result five new regional pro bono programs will open their doors
during the second half of 2012. The five new pro bono programs include Denver,
California, Texas, Washington DC metropolitan area, including Maryland and Virginia,
and New York City metropolitan area, including northern New Jersey and Connecticut.
Look for at least ten additional regional programs to open their doors in 2013. Also be on
the lookout for a single entry point for anyone interested in pro bono assistance, which
should be ready for applicants in July. Notice will be posted on the USPTO website
providing additional information about the progress of each of these exciting steps
forward.
Eligibility and acceptance to any regional pro bono program will be determined by an
initial screening process. The screening will look at the individual’s or small business’
knowledge of the patent system, the potential patentability an invention and income
qualifications. The knowledge requirement can be shown through a filing receipt for a
pending patent application or through a certificate of completion for a general
knowledge course provided at
https://uspto.connectsolutions.com/certificationpackage/. The ability to show an
invention’s patentability can be shown through a patent search for similar prior art. The
qualification of income limit is determined by each regional program. Please visit
http://www.uspto.gov/inventors/proseprobono/index.jsp for additional information as it
becomes available.
MN: http://legalcorps.org/inventors
AIA Patent Pro Bono
Program Development
10 Regional Programs Planned for 2013
•
•
•
•
•
•
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•
Boston (MA, NH, VT, ME)
Philadelphia (east PA, DE, south NJ)
Cleveland (west PA, east OH, WV)
Detroit (MI, west OH, east IN, north KY)
Chicago (north IL, possibly east WI and
northern IN)
Raleigh/Durham (NC, south VA, east TN)
Atlanta (GA, SC, central TN)
Miami (FL)
Salt Lake City (UT, east CO, south ID, west
WY)
FCBA: Nationwide
Clearinghouse
http://www.fedcirbar.org/olc/pub/LVFC/cpages/mi
sc/pto.jsp
• Initial screening and referral of prospective
pro bono clients
• Entry through FCBA, USPTO websites
• Three criteria to check
 Understanding of patent process
o Filing receipt - provisional or nonprovisional
o Successful completion of USPTO
certificate training on patent process
(inventor pages, pro se/pro bono)
 Patent search question
 Brief description of invention
https://secure.www.fedcirbar.org/olc/pub/LVFC/event/showEventForm.jsp?form_id=131881
http://www.fedcirbar.org/olc/pub/LVFC/cpages/misc/pto.jsp
Ways to get involved in
Chicago Patent Pro Bono
• Potential Volunteer Attorney
• Steering Committee
o Linn Inn Representatives Chosen By Board
• Bob Surrette and Julianne Hartzell
o IPLAC Representatives Chosen
• Joe Hetz, IPLAC Patents committee Vice Chair
o May be looking for Corporate and Law Firm Sponsors
o Law School and Business School Representatives?
• Working Committees
o Supporting Organization Identification (Law School or Non-Profit)
o Scope of Representation Evaluation (provisional, non-provisional, etc.)
o Process – development of policies, forms, infrastructure
• Client intake and screening
• Referral to volunteer attorney(s)
o Volunteer Recruitment and Training
o Publicity and Website Portal Development
o Fundraising and Budgeting
• Partnering with corporations, law firms, and community groups
Is Patent Pro Bono
A Good Idea?
Will financially challenged inventors
with good inventions
get partners or financial support
without the need pro bono representation?
AIA Section 32
The Director shall work with and support intellectual property
law associations across the country in the establishment of pro
bono programs designed to assist financially under-resourced
independent inventors and small businesses.
IP Pro Bono Opportunities
for Chicago-Area Attorneys:
Law Schools: Contact the school of your choice if interested in getting involved
LCA: Sign up tonight and we’ll forward your information (or visit LCA website)
*NOTE: If you are already involved in LCA, please so indicate on sign-up list
Patent Pro Bono: Sign up tonight and we’ll forward your information
to steering committee as program gets underway
THANK YOU!
Sandip Patel and our hosts at
Marshall Gerstein Borun
Pupilage Group 3
Aaron Barlow, Amy Ziegler, Ben Horton, Bill McGrath,
Carolyn Blessing, Chris Carani, Ellen Padilla,
Hon. Virginia Kendall, John Alex, Julianne Rybakova,
Michael Brandt, Pat Burns, Paul Kitch, Sam Cook,
Stephanie Felicetty, Stephanie Johnson, Tom Filarski
IP Pro Bono Opportunities
for Chicago-Area Attorneys:
GOYB!
Richard Linn Inn of Court
November 28, 2012

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