Patent Pro Bono Program Qualifications and Application

Patent Pro Bono Program Qualifications and Application​

Beginning on January 1, 2023, the Penn State Law Intellectual Property Clinic will begin administration of the Patent Pro Bono Program. If you are a patent attorney or agent interested in volunteering, please go here for more information and to sign up. If you an inventor interested in obtaining pro bono services under this program, applications will be accepted starting January 5, 2023. Before submitting an application to the Patent 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 LaunchBox staff, Penn State Law students or staff, or a volunteer patent practitioner will result in expulsion from the program and denial of future services.

You can jump to sections using the following links:

• Qualifications for Inventors
• Invention Requirements
• Other Requirements
• Pre-Application Checklist
• Apply!

Qualifications for Inventors

The Patent Pro Bono Program supports solo inventors, non-profits, and 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;
• Ownership Interest; and
• Number of Patents Previously Filed.

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 Pennsylvania;
• Income: the inventor must have a total household income of less than 400% of the federal poverty guidelines(See aspe.hhs.gov);
• Ownership Interest: the inventor must not be under an obligation to assign (sell or give ownership of) the patent rights to a third party; and
• Number of Patents Previously Filed: the inventor must not have filed 4 or more patent applications with the United States Patent & Trademark Office.

Non-Profit Qualifications

To qualify as a Non-Profit:

• Number of Inventors: there must be no more than 4 known inventors of the invention;
• Assignment to Organization: each inventor must agree to assign his/her rights to the non-profit;
• Qualify Individually:
  • Individual Residency: each inventor must reside in Pennsylvania. 
  • Individual Income: each inventor must have a total household income of less than 400% of the federal poverty guidelines (See aspe.hhs.gov);
  • Individual Number of Patents Previously Filed: each inventor must not have filed 4 or more patent applications with the United States Patent & Trademark Office; 
• Type of Non-Profit: the non-profit must not be a research institution or an institution of higher learning;
• Residency: the non-profit must be a domestic corporation established in Pennsylvania with 501(c)(3) status;
• Previous Year Budget: the non-profit must have a budget of less than one hundred seventy-five thousand dollars ($175,000) in the previous calendar year;
• Projected Year Budget: the non-profit must have a budget of less than one hundred seventy-five thousand dollars ($175,000) in the current calendar year; 
• Ownership Interest: the non-profit must not be under an obligation to assign (sell or give ownership of) the patent rights to a third party; and
• Number of Patents Previously Filed: the non-profit must not have filed 4 or more patent applications with the United States Patent & Trademark Office. 

Small Business / Inventor Group Qualifications

To qualify as a Small Business / Inventor Group:

• Number of Inventors: there must be no more than 4 known inventors for the invention;
• Assignment to Organization: each inventor must agree to assign his/her rights to the business;
• Qualify Individually:
  • Individual Residency: each inventor must reside in Pennsylvania;
  • Individual Income: each inventor must have a total household income of less than 400% of the federal poverty guidelines (See aspe.hhs.gov);
  • Individual Number of Patents Previously Filed: each inventor must not have filed 4 or more patent applications with the United States Patent & Trademark Office;
• 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: the business must not be under an obligation to assign (sell or give ownership of) the patent rights to a third party;
• Number of Patents Previously Filed: the business must not have filed 4 or more patent applications with the United States Patent & Trademark Office. 

Invention Requirements

The Invention Must be Patent Eligible

What are Patent Eligible Inventions? Inventions are a “process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” an ” ornamental design for an article of manufacture,” or an asexually reproduced “plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state.” These inventions qualify for assistance by the Patent Pro Bono Program.

What are Not Patent Eligible Inventions? Some inventions may not qualify for a patent. Typically, these are products of nature, abstract ideas, laws of nature, natural phenomenon, business methods, and inventions that do not follow the laws of thermodynamics. Examples include: “Methods of detecting fraud in a credit card transaction”, “Methods and investment instruments for performing tax-deferred real estate exhanges”, “Antenatal screening for Down’s syndrome,” “Cloned mammals produced by somatic cell nuclear transfer” (note: the cloned mammal cannot be patented, but a process of cloning might be patent eligible), and “Lipid-Containing compositions and methods of use thereof”, and perpetual-motion / cold-fusion devices. These inventions DO NOT qualify for assistance by the Patent Pro Bono Program.

Also, Other Things That are Not Patent Eligible Include: Brands, business names, artwork, trademarks, t-shirt designs, rules of playing a game, recipes, and so much more. These DO NOT qualify for assistance by the Patent Pro Bono Program. 

If you are seeking assistance with one of not patent eligible topics, please reach out to your local LaunchBox or go to https://happyvalley.launchbox.psu.edu/.

Invention Must be Reduced to Practice

The concept or invention must be “reduced to practice” to qualify for the Patent Pro Bono Program assistance. In the most simple terms, this means the inventor must have a physical manifestation of the invention. Specifically, the Patent Pro Bono Program requires inventors to either:

1. Create a working prototype; or
2. Describe the invention in sufficient detail such that a person with ordinary skill in the relevant field could Make and Use the Invention without any outside assistance.

We require a reduction to practice to ensure that inventors have a definite and permanent manifestation of an invention instead of merely an idea. An idea becomes a definite and permanent manifestation when the inventor has a specific, settled idea or a particular solution to the problem at hand. A general goal or research plan the inventor hopes to pursue is not a definite and permanent manifestation of an invention and therefore does not qualify for the program.

Inventor Must Not Have Disclosed the Invention More Than 10 Months Ago

There are many rules to obtain a patent in the United States. One such rule is if an inventor discloses his/her invention publicly then the inventor has one (1) year from the date of the disclosure to file a patent application for the invention. Failure to file within the one (1) year of first disclosure results in the inability of the inventor to obtain a patent for the invention.

To protect our patent attorneys/agents from having very little time to properly draft and file a patent application, we require inventors to provide at least 2 months to our attorneys/agents to timely file. This means any inventor, having disclosed greater than 10 months prior to the current date, will not and cannot be placed with a pro bono patent attorney/agent through the Patent Pro Bono Program. 

Inventor Must Have a Good-Faith Belief that the Invention is Novel and Non-obvious

Inventor must have a good-faith belief that:

• The inventor was the first to invent or discover the invention or improvement;
• The invention or improvement must not be patented by another, described in a printed publication by another, in public use by another, on sale by another, or otherwise made available to the public by another; and
• A person having ordinary skill in the art would not know how to make and use the invention based on the simple combination of prior art references.

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Other Requirements

Prior to an intake or being placed with a patent attorney, each inventor must participate in an approved patent training seminar or demonstrate he/she has been a named inventor on another patent. Additionally, inventors must conduct a prior art search and find at least 3 relevant prior art references prior to scheduling an intake meeting.

Required Patent Training

Inventors must participate in the USPTO’s online patent training module (En Español), print out (or take a picture of) the final completion certificate, and email it to us prior to scheduling an intake.

ALL inventors who are going to be listed on the patent must either:

• already be listed on another patent or pending application;
• attend an approved training seminar; or
• complete the USPTO online training module.

Required Prior Art Search

This is a mandatory requirement for this program. Take your prior art search seriously. 

What is Prior Art? “Prior Art” encompasses all existing information, knowledge, and references existing anywhere in the world prior to filing a patent. Of course, not all prior art matters. When patent agents and attorneys talk about “prior art,” they are referring to the following, in relation to your particular invention:

• Prior Patents (U.S. or Foreign);
• Published Articles;
• Public Demonstrations; and
• Other Public Disclosures (including products for sale anywhere in the world).

There is always prior art out there. We do not accept, “there is nothing like my invention out there” as an appropriate response to our request for a prior art search. We are NOT asking you to find your exact invention. We are asking you to find similar inventions. If we were to ask you, “What is similar and different between the prior art reference and your invention,” you should be able to find at least 1 similarity and at least 1 difference between the reference and your intention. Example of an Appropriate Prior Art Search: If you invented an improvement to an umbrella which illuminates the ground when it is dark outside, you may reference a traditional umbrella, a traditional flashlight, and a light-sensor as prior art references for your invention. Please note, each of those references are valid prior art references, but no single reference discloses all the elements of your invention.

How do I search for Prior Art? A great place to start is to look through existing patents. You may do so on the USPTO’s website (PatFT & AppFT), the European Patent Office’s website (eSpaceNet), any one of several paid subscription services, or by using Google Patents. Another great place to start is a product search on websites that sell products similar to yours . A well-done search should reveal similar inventions, including those inventions upon which your own invention likely relies. More importantly, the prior art search should help educate you, as the inventor, as to the current state of the field of your invention.

European? Why do I need to search that? The USPTO considers all prior art globally, not just applications, patents, and other descriptions from the United States. Many companies around the world file patents with the EPO, and many of these are in English, or translated into English. We suggest you search through applications and patents separately.

How can I get help with how to perform a prior art search? Luckily for us in Pennsylvania, the USPTO has a resource center located on Penn State’s campus! The Patent and Trademark Resource Center can teach you how to do an effective and efficient patent search. The library website at has numerous tutorials, and the coordinator schedules consultations through Zoom, email or in-person. https://guides.libraries.psu.edu/patents

In addition, the Intellectual Property Clinic can assign law students to conduct a prior art search for you. You can schedule a meeting with the Intellectual Property Clinic  here: https://happyvalley.launchbox.psu.edu/intellectual-property-clinic/  

What about commercial searches? You may utilize the assistance of a commercial search company, but the results must be less than 3 months old, and we will need to see a copy of the contract with the search company to ensure you have not disclosed the invention or assigned any patent rights.

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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 business or non-profit.
• Collect basic information about your invention.
• Have information on previous patents/applications filed by each inventor. (if applicable)

Once you are ready to submit an application, please complete either the Solo Inventor Application or the Small Business/Non-Profit Application.

Which application do I use?

If you are the only inventor to be listed on the patent, click the Solo Inventor Application Button. If there will be 2 or more inventors listed on the application, click the Small Business/Non-Profit Application button.

What happens next?

Once you complete an application form, our staff will review your answers and contact you within a reasonable period of time. If you qualify for our program, we will send follow-up questions. Once you have answered the questions to our satisfaction, we will schedule an intake appointment for you. This appointment must attended in person.

If you do not qualify for our program, we will inform you of the reason and send you resources on filing pro se or acquiring assistance.

What is a reasonable period of time?

We attempt to contact applicants within 1 week. However, there are several periods of time during which you should expect application reviews to take longer:

• Mid December to Mid January 
• Mid March
• Late April to Early May
• Mid May to Mid June
• Early August to Late August
• Mid October to Late October

During these periods, our office is normally undergoing significant staffing changes, coinciding with the end of the law school semesters, has significant events for fundraising, or is closed for the holidays. We ask that you exercise patience if you apply directly before or during any of these periods.

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Click below to Apply!

Apply as a Solo Inventor 

Apply as a Small Business/Non-Profit