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IP Pro Bono Opportunities for Chicago-Area Attorneys Richard Linn Inn of Court November 28, 2012.

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Presentation on theme: "IP Pro Bono Opportunities for Chicago-Area Attorneys Richard Linn Inn of Court November 28, 2012."— Presentation transcript:

1 IP Pro Bono Opportunities for Chicago-Area Attorneys Richard Linn Inn of Court November 28, 2012

2 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

3 Introduction Vignette 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.” Wherein we meet … ARTIST considering her legal options and CORPORATE IP ATTORNEY considering options for pro bono legal service

4 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

5 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

6 Pro Bono Legal Service for the Arts http://www.law-arts.org/ Information Presented with LCA Approval

7 213 W. Institute Pl #403 Chicago, IL 60610 Ph: (312) 649-4111 Information Presented with LCA Approval

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11  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

12  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

13 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 Why attorney might want to get involved o Concerns about undertaking pro bono work o What types of IP pro bono opportunities available in Chicago area o Development of Chicago-area Patent Pro Bono program o How to sign up to get involved in various pro bono programs

14 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: $_____.

15 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).

16 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

17 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.

18 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?

19 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

20 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

21 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.

22 Malpractice Employer Pro Bono or Legal Clinic

23 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].

24 Where Pro Bono? Legal Clinics Law School Clinics LCA Patent Pro Bono Program o Under development o Target date 2013

25 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?

26 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

27 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

28 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.A pilot program in Minnesota 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. https://uspto.connectsolutions.com/certificationpackage/ http://www.uspto.gov/inventors/proseprobono/index.jsp

29 MN: http://legalcorps.org/inventors

30 AIA Patent Pro Bono Program Development 10 Regional Programs Planned for 2013 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) Seattle (WA, north ID, west MT)

31 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 non- provisional o Successful completion of USPTO certificate training on patent process (inventor pages, pro se/pro bono) Patent search question Brief description of invention Clients referred to regional programs for further screening

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33 https://secure.www.fedcirbar.org/olc/pub/LVFC/event/showEventForm.jsp?form_id=131881

34 http://www.fedcirbar.org/olc/pub/LVFC/cpages/misc/pto.jsp

35 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

36 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.

37 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

38 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

39 IP Pro Bono Opportunities for Chicago-Area Attorneys: GOYB! Richard Linn Inn of Court November 28, 2012


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