Helping under-resourced inventors navigate the patent system
By Giulia Ragonesi, Patent Law Division and Edward Harris, Communications Division, WIPO
For Antonio Gonzalo Hoyos Barón, tragedy was the mother of invention. For years, the forensic scientist heard about health workers waiting at rural health clinics across Colombia for ambulances that never arrived: the rushing vehicles hydroplaned while cornering on rain-slicked roads before foundering and, in one instance, flipping over and killing a young female patient.
Hoping to help solve this problem, Mr. Hoyos Barón began in the mid-1990s to work on a claw-like metal contraption to be mounted on vehicles traveling during South America’s rainy season, providing lateral stability on wet and muddy roads. Work progressed slowly. But when a prototype had the desired effect, Mr. Hoyos Barón was thrilled. “Imagine seeing something you’ve been dreaming of for such a long time becoming reality and with the potential to be so useful,” he says.
That potential, however, remains largely untapped, because taking it to the next step means obtaining the patent protection that would attract investors and help commercialize the product. Lacking what he calls “musculos financiarios” – financial muscle – for the costs that often include attorneys’ fees, Mr. Hoyos Barón was stuck – like many inventors who lack financial means.
Support is in sight
Help is on the way. A new WIPO-led effort is helping match Mr. Hoyos Barón and other under-resourced inventors and small businesses in developing countries with intellectual property (IP) lawyers willing to work for free to help the inventors better navigate the patent-filing process.
The Inventor Assistance Program (IAP) was formally launched globally on October 17, 2016, following successful pilot projects in Colombia, Morocco and the Philippines. The IAP is a WIPO initiative in cooperation with the World Economic Forum and an array of other sponsors, including the Inter-American Association of Intellectual Property (ASIPI), the International Federation of Inventors’ Associations (IFIA), Novartis, Qualcomm, Pfizer, the European Patent Institute (EPI) and the United States Federal Circuit Bar Association (FCBA).
The exact number of under-resourced inventors around the world is unknown, but data show that up to 60 percent of patent applications filed by locals in many developing countries are abandoned or rejected even before they are examined as to substance because very few people in these countries know their way around the patent system. “A lack of access to often costly legal expertise is a real, but surmountable, obstacle to a great deal of innovation that can benefit societies,” explains Marco Aleman, Acting Director of WIPO’s Patent Law Division, which oversees the IAP.
The IAP’s recent launch is timely, as it comes amid a rising understanding in legal communities around the world of the importance of pro bono work, says Mr. Aleman. While the United States has the most highly developed pro-bono culture in the world, lawyers in other countries are increasingly donating their time to help poorer people navigate legal systems, and IP systems in particular.
Promoting pro bono in the field of IP
Still, in countries where lawyers are able to undertake pro bono work outside their areas of expertise, many turn to civil-rights, criminal law or other areas of law – finding it personally fulfilling, or thinking it will have the greatest impact. Indeed, until the establishment of the IAP, there was little opportunity for IP lawyers to undertake pro bono work to help innovators overcome the issues they face in turning their ideas into marketable products.
“We really need to encourage pro bono work in general, but particularly pro bono in IP,” Mr. Aleman says. “This is a challenge because the concept is quite new in many jurisdictions.”
For IP lawyers, actually finding under-resourced inventors can be difficult, since these innovators are often outside the IP ecosystem and rarely seek out free legal advice. This is where the IAP can help – by connecting the two parties.
“Our aim is to build up a network of lawyers offering their services on a pro bono basis and to link them up with under-resourced inventors. These people often live in the same city, but have little or no opportunity to meet,” says Mr. Aleman. “These lawyers can help under-resourced inventors navigate the patent process by providing the technical advice required to avoid the pitfalls that can result in a patent application not making it beyond the first pass.”
How the IAP works
The aim of the IAP is to put under-resourced inventors in contact with pro bono patent attorneys. Each participating country sets up a national screening board. These are usually embedded within national Technology and Innovation Support Centers (TISCs) – (see box). In consultation with the national IP office, the board establishes eligibility criteria for inventors’ participation in the program and identifies suitable candidates. Once eligible inventors have been selected, the national IAP coordinator informs the beneficiaries and WIPO, whose role it is to identify an appropriate IAP-registered pro bono patent attorney. The chosen attorney then meets with the inventor to begin working on the case. As the central coordinator of the IAP, WIPO is working to expand its roster of pro bono patent attorneys and is actively promoting the program among its member states and the public.
Best practices to avoid conflicts of interest
The IAP embraces established best practices to avoid any conflicts of interest and guarantee quality service. For example, before accepting a case a volunteer patent attorney has to ensure there is no possible conflict of interest in the same way he or she does when handling cases for fee-paying clients. Similarly, the quality of the service provided by a patent attorney doing pro bono work must be the same as that provided to fee-paying clients. This is a guiding principle of the program and one which is accepted by all attorneys that sign up to it. Any other potential conflicts are handled in the same way as those that may arise in relation to fee-paying relationships.
The WIPO Technology and Innovation Support Center (TISC) program provides innovators in developing countries with access to locally based, high-quality technology information and related services, helping them to exploit their innovative potential and to create, protect and manage their IP rights.
To the same end, IAP company sponsors have no knowledge of the substance of any patent application handled by IAP pro bono attorneys. As outlined in the IAP’s Guiding Principles, their role is to promote the IAP among their internal networks of preferred firms, and to help recruit qualified counsel to serve as pro bono patent attorneys under the program. Corporate sponsors are also called upon to identify and help secure opportunities to support the IAP financially, for example by helping to fund national or regional training sessions, coordination meetings, or marketing efforts.
In support of national innovation goals
The IAP also promises to support national innovation goals, enhance national patent systems and contribute to economic growth. In today’s globalized world, the exclusive rights conferred by a patent guarantee the title holder a privileged position in the market and help attract much-needed business investment. Helping local inventors to obtain a patent gives an invaluable helping hand in the process of turning their creativity into a business opportunity.
So far, the IAP has helped 13 inventors in the three pilot countries, with inventions including a portable espresso-coffee maker and a device that turns home waste into fertilizer. The invention that has advanced the furthest in the patent process is a machine and a process for obtaining animal food from plant waste. This is already the subject of an international patent application (PCT/IB2016/055056) under WIPO’s Patent Cooperation Treaty (PCT), which offers a streamlined way of obtaining patent protection in multiple jurisdictions.
In setting up the IAP, WIPO and the World Economic Forum took inspiration from the 2011 America Invents Act which requires (under Section 32) the United States Patent and Trademark Office (USPTO) to assist IP law associations across the country in establishing pro bono programs for patent-related services in support of under-resourced inventors and small businesses. The IAP is designed to meet a similar need in developing countries, helping under-resourced inventors to protect their products in home markets and internationally in selected jurisdictions via the PCT.
Importantly, the IAP seeks not only lawyers in the developing countries where the inventors live, but also in richer countries where those inventors might ultimately seek international protection for their invention. A US-based attorney could, for example, ultimately help an overseas IAP-sponsored inventor like Mr. Hoyos Barón engage with the USPTO.
Former USPTO Director David Kappos, Chair of the IAP Steering Committee, explains that the IAP is “about bringing specialist skills aligned with what other human beings really need and can’t get access to, which is access to the innovation system of our world… Simply put, it creates opportunity – economic opportunity and societal opportunity – for people who have great ideas but just don’t happen to have huge financial resources,” he says. “It provides an entrance ramp to the IP system.”
Mr. Kappos sees a large role for the program. “Eventually, I hope that it will be able to serve inventors all over the world, in both developing and developed countries, who have good ideas but don’t have financial resources. The plan is that every human with a great idea gets a chance to make something of it.”
Benefits for pro bono IP lawyers
Pro bono IP work for IP lawyers is not simply a selfless act, but can actually generate benefits for legal professionals themselves.
Pro bono work like that sponsored by the IAP “not only gives a young lawyer the opportunity to grow and to advance; it gives the young lawyer an opportunity to give of herself or himself to the society in which they live in a very meaningful way,” said Judge Jimmy V. Reyna of the United States Court of Appeals for the Federal Circuit at the IAP’s global launch event.
“But more than that, it affords the opportunity to individuals to have access to the legal system, in this case to the patent system, so that they can expand technology, innovation and creativity,” he said. “And I do think that creativity and innovation fulfills a basic desire and human need to grow and to develop and to cause a small positive change and the next day to have another change to build on top of that, and then another one on top of that – and that’s the spark of human development,” he said. “That’s a long way from pro bono to human development, isn’t it? But that's it in a package.”
That’s the hope for Mr. Hoyos Barón, who says that successful inventors need four traits: intelligence, passion, persistence and a pinch of craziness.
After years of effort, his younger working-age children are facing uncertain job prospects in a poor global economy and hope their father’s invention might one day turn into a family business. This change in heart – they previously thought his invention was a pipe dream – has come about thanks to Mr. Hoyos Barón’s experience with the IAP. “When the World Intellectual Property Organization contacted me in the framework of the Inventor Assistance Program,” he says, my kids “understood that my invention fulfilled a practical need and had potential after all.”
The WIPO Magazine is intended to help broaden public understanding of intellectual property and of WIPO’s work, and is not an official document of WIPO. The designations employed and the presentation of material throughout this publication do not imply the expression of any opinion whatsoever on the part of WIPO concerning the legal status of any country, territory or area or of its authorities, or concerning the delimitation of its frontiers or boundaries. This publication is not intended to reflect the views of the Member States or the WIPO Secretariat. The mention of specific companies or products of manufacturers does not imply that they are endorsed or recommended by WIPO in preference to others of a similar nature that are not mentioned.