Threading the Needle-June 2011

Threading the Needle-June 2011

Making it easier to get a patent.

Someone needs to buy about 60,000 of Pam Turner’s sewing needles.

Four years ago, Turner quit her job as a salesperson at Select Comfort to pursue a dream of building a company around her ingenious invention: a sewing needle that is easy to thread. The needle has since been marketed as the “Spiral Eye Side Threading Needle,” and licensed as the “One-Second Needle” by Telebrands, the “As Seen on TV” people. Yet Turner is still deep in debt, shouldering a financial burden that includes more than $40,000 in legal costs to patent her product both domestically and internationally.

As a solo inventor, Turner is far from alone in her predicament, and her legal bills aren’t unusual. The cost of obtaining a patent on an invention remains a major hurdle for many would-be inventors—so much so that many delay getting a patent until it’s too late. 

“A lot of people have great ideas, but they don’t have the resources to protect their idea and then get it into the market,” says Deb Hess, the longtime executive director of the Minnesota Inventors Congress in Redwood Falls.

Help may be on the way. A unique—yes, one-of-a-kind—program is about to launch in Minnesota that will provide pro bono, and eventually “low bono,” assistance for inventors of modest means to secure patent protection for worthwhile ideas.

Each year, roughly 11,500 inventors, 60 to 70 of them in Minnesota, file patents with the U.S. Patent and Trademark Office (USPTO) without the aid of a lawyer, according to John Calvert, administrator of the patent office’s inventor assistance program in Washington. As with other self-represented legal filings, these are called pro se filings, which in Latin means “for oneself.” In English, pro se generally translates as “fat chance.” And in government-speak, it all-too-often means, “oh no.”

“It takes a lawyer out of college about two years before he can file a patent by himself,” says Jim Patterson, founder of Patterson Thuente IP, a 20-year-old patent and trademark law firm in Minneapolis. “With pro se filings, it’s often garbage in, garbage out. There are ideas out there, but when they are filed pro se, they’re often doomed from the start because they’re not drafted properly and don’t ask for the appropriate protection.”

While pro se cases make up less than 3 percent of the mountain of filings, they have a tendency to “gum up the works,” says Patterson, because pro se filers tend to take up an outsized amount of the patent office’s time. “Several months ago, I helped one gentleman from California with a simple question,” says Calvert, the USPTO liaison. “Now he calls me every week with something.”

The idea of a pro bono service in Minnesota came up a little more than a year ago at a lunch that Patterson’s firm hosted for David Kapos, director of the U.S. Patent and Trademark Office and new to the job at the time. If there’s one thing Kapos is serious about, it’s the patent office’s Everest-sized backlog of cases—currently more than 700,000—and the glacial pace of reviewing them. It currently takes more than two years before the USPTO records its “first office action” on an application; by 2015, Kapos wants to shorten that process to 10 months.

The government has tried, unsuccessfully, on two separate occasions to launch a pro bono effort. The roadblock: the infrastructure to administer the program—namely to screen the cases, bring them into a process, then refer them to the appropriate lawyer.  

Kapos mentioned during his lunch meeting with Patterson that he hadn’t given up on the idea of a pro bono program. Patterson later contacted Candee Goodman, the pro bono director at Minneapolis-based law firm Lindquist & Vennum and a member of the project steering committee, and the two of them quickly sketched out a plan for an infrastructure to make it happen. Within weeks, Patterson and Goodman had been summoned to Washington to meet with top USPTO officials.

The legal profession in Minnesota has a rich history of high participation in pro bono work. Standard practice is for such work to be provided only to those who are at or below 300 percent of the federal poverty level. So with the program Patterson is rolling out, entrepreneurs can partake if they make less than $32,670 a year as an individual or $67,000 a year for a family of four. 

The program will be administered through LegalCORPS, a Minneapolis organization that helps connect volunteer lawyers with small businesses and nonprofits, and will be staffed by a part-time administrator supported by corporate donations. The idea, by the way, has been enthusiastically embraced by all of the area’s largest law firms, as well as Ecolab, 3M, and Valspar.

Clearly, getting a patent is just one step in starting a business, and some businesses don’t need to take such a step at first or at all. But for many, patenting the product or idea is crucial—a great idea that isn’t properly protected under the law can quickly become someone else’s patented idea.

“Ultimately, such a program accomplishes two things,” says Lindquist & Vennum’s Goodman. “LegalCORPS is set up to help take people off the unemployment rolls, get them productive—help them start a new business. The patent service is another piece of that process. And the service overall helps improve the nation’s patent process.”

Says the USPTO’s Calvert: “The director’s vision is that within five years, he wants 70 of these pro bono programs around the country. He really believes in this concept and that we can help restore the economy. If we pull the lawyers together, this can really happen.  This is both good for the country and good for Minnesota.”

Once the pro bono program is up and running, Patterson and his team hope to introduce a “low bono” version of the program that would charge people like Pam Turner, who doesn’t qualify for the pro bono service, a small sum to file the necessary patent work on her next invention. Eventually that could make the entire program self-funding. 

Turner, meanwhile, tells me she’s working on a fish hook.

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