A U.S. Patent and Trademark Office-backed pro bono patent program recently yielded its first patent from a Minnesota pilot program started last June. On June 6, Fish & Richardson announced that independent inventor Nick Musachio of St. Paul, Minn., was issued a patent for a resistance exercise and physical therapy apparatus he calls “Kefty Kord.”
Minnesota’s LegalCORPS, a business law pro bono organization, administers the Minnesota pilot: the LegalCORPS Inventor Assistance Program. Three Minneapolis firms co-founded the program: Lindquist & Vennum; Meyer & Njus; and Patterson Thuente Christensen Pedersen.
The America Invents Act, the new patent law enacted last September, calls for the PTO to “work with and support intellectual property law associations” across the United States in setting up pro bono patent programs. The PTO also established the Colorado Pro Bono Patent Initiative in April with the Colorado Bar Association Intellectual Property Section and the Mi Casa Resource Center, which helps low-income individuals with economic issues.
Fish & Richardson helped Musachio with his patent application after the PTO initially rejected it. Musachio, who now has two fitness-related patents and two related to electrified roadway systems, said he’s grateful for the pro bono program.
“It seems like things are growing grimmer for small inventors legally,” Musachio said. “The [patent reform act's] first-to-file [provision] is going to lead to even more paranoia among inventors and even more danger in disclosure of patentable art.” That provision will take effect in March 2013.
After the initial rejection, Musachio said Fish & Richardson Minneapolis associate Chris Hoff helped him quickly set up an interview with the patent agent. “I might have stumbled through, [but] it was quite a blessing for me” to have that help, Musachio said.
The program is a great opportunity to help solo inventors, Hoff said. Musachio is the “quintessential garage inventor,” he said. It’s tough for people like him to afford a drawn-out patent prosecution proceeding, such as when a patent is rejected, he added. “That’s where a solo inventor runs into a lot of difficulties.”
Hoff also said the program is good for intellectual property lawyers. “A lot of our attorneys are interested in doing pro bono work and giving back to the community, [but] often times we don’t have patent prosecution-related pro bono opportunities,” Hoff said.
“It’s just been inspiring to me the way the patent bar has stepped up,” said Jim Patterson, managing partner of Minnesota co-founding firm Patterson Thuente. “There’s been no want of volunteers.”
Several other firms are involved in each of the two pro bono efforts. In Minneapolis, founding sponsor firms include Barnes & Thornburg; Dorsey & Whitney; Faegre Baker Daniels; Fish & Richardson; Fredrikson & Byron; Fulbright & Jaworski, Merchant & Gould; Mueting, Raasch & Gebhardt; Schwegman, Lundberg & Woessner; and Robins, Kaplan, Miller & Ciresi.
Attorneys from Dorsey & Whitney, Faegre Baker and Merchant & Gould are on the steering committee of the Colorado Pro Bono Patent Initiative. Other law firms supporting the Colorado program include Kilpatrick Townsend & Stockton and Marsh Fischmann & Breyfogle.
This article originally appeared in The National Law Journal.
