Information for Inventors

Qualifications and Application

Before submitting an application to the PTAB Pro Bono program, you must read all the information below. You will not be admitted to our program if you do not meet the requirements.

Additionally, placement with a volunteer patent practitioner is at the sole discretion of the program administrator. Failure to be prepared, courteous, and respectful to PTAB Pro Bono staff or a volunteer patent practitioner will result in expulsion from the program and denial of future services from PTAB Pro Bono.

You can jump to sections using the following links:

• Information for Inventors.
• Eligibility Requirements
• Other Requirements
• Federal Poverty Guideline
• Pre-Application Checklist
• What Happens Next
• Apply!

Information for Inventors

The Patent Trial and Appeal Board (“PTAB”) is a tribunal within the United States Patent and Trademark Office (“USPTO”) that reviews rejections made by patent examiners.  If a patent examiner twice rejects or issues a final rejection in a patent application, then the applicant can seek review of the rejection by a panel of three technically and legally trained administrative patent judges.  In proceedings called ex parte appeals, the PTAB will review the correctness of the patent examiner’s rejection.  

The PTAB Bar Association matches qualified financially under-resourced inventors, inventor groups, and inventor-owned small businesses with experienced patent practitioners to represent them before the PTAB.  In this Program, patent practitioners will assist inventors in preparing, filing, and arguing ex parte appeals before the PTAB.  Patent practitioner services are provided at no cost.  However, the inventor, inventor group, or inventor-owned small business remains responsible for paying any government required fees associated with the appeal.

Eligibility Requirements

The Patent Pro Bono Program supports solo inventors, inventor groups, and inventor-owned small businesses. Each category of applicant has different requirements to qualify for assistance from our organization, but each typically has to show:

• Number of Inventors;
• Residency;
• Income;
• Knowledge;
• Timing; and
• Ownership Interest.

Solo Inventor Qualifications

To qualify as a Solo Inventor:

• Number of Inventors: there must be exactly 1 known inventor for the invention;
• Residency: the inventor must reside in United States;
• Income: the inventor must have a total household income of less than 400% of the federal poverty guidelines;
• 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 1 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.

Inventor Group Qualifications

To qualify as an Inventor Group:

• Number of Inventors: there must be no more than 4 known inventors for the invention;
• Qualify Individually:
  • Residency: each inventor must reside in United States;
  • Income: each inventor must have a total household income of less than 400% of the federal poverty guidelines; and
  • 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 1 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

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 4 known inventors of the inventor-owned small business;
• Assignment to Organization: each inventor must agree to assign the application and resulting patent (if applicable) to the business;
• Qualify Individually:
  • Residency: each inventor must reside in 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; and
  • 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 one hundred fifty thousand dollars ($150,000);
• Projected Year Business Income: the business must expect a total gross income of less than one hundred fifty thousand dollars ($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.

Other Requirements

In addition to the above requirements, the applicant(s) must not otherwise be represented by a patent practitioner for the PTAB proceeding and must be prepared to pay the cost of any government required appeal processing fees or other fees associated with your appeal.

Federal Poverty Guideline

The PTAB Pro Bono Program uses the Federal Poverty Guideline as the basis for determining financial eligibility to receive pro bono services. The Guideline is adjusted based on the number of people in your household. For the most accurate numbers, please check here.

Pre-Application Checklist

Before starting your application, please make sure you:

• Have read and completed all of the previous steps.
• Have the name and e-mail address of each inventor.
• Collect financial information about each inventor and (if applicable) your small business.
• Collect information about your appeal.

What Happens Next

Upon acceptance into the program, the PTAB Bar Association will attempt to match an inventor, inventor group, or inventor-owned small business with a volunteer patent practitioner. A match is not guaranteed. In the event that the PTAB Pro Bono Program is unable to find match within one month of acceptance into the Program, you will be contacted to inform you that the PTAB Bar Association was unable to place you with a patent practitioner.

The PTAB Bar Association reserves the right to reject applications for any reason, for example:

• Failure to meet the eligibility requirements;
• Submission of an incomplete application;
• Failure to abide by program rules or instructions from PTAB Pro Bono Program personnel; and
• Harassment of PTAB Pro Bono Program personnel.

Apply!

Apply as a Solo Inventor.
Apply as an Inventor Group.
Apply as an Inventor-Owned Small Business.




For questions about applying to receive pro bono services under the PTAB Pro Bono Program, please contact: