WIPO-WEF: Pairing Developing Country Inventors With Patent Attorneys

Under the new Inventor Assistance Program established jointly by the World Intellectual Property Organization and the World Economic Forum, inventors and small businesses with limited financial means coming from a developing country will be able to seek pro bono legal assistance of patent attorneys to obtain patent protection.

The Inventor Assistance Program (IAP) webpage is here.

Launched in April 2015, the programme is currently in the pilot phase in one participating country, Colombia. The pilot is expected to include another two countries – one each in Asia and Africa – before the end of the year, with the ultimate goal of extending the programme to those developing countries with low levels of filings and high numbers of rejections due to formal requirements, according to Marco Aleman, acting director, WIPO Patent Law Division.

“The idea for this project is the brainchild of former director of the United States Patent and Trademark Office and main driver of the US pro bono programme, David Kappos, and WIPO Director General Francis Gurry, who decided to combine the efforts of the World Economic Forum – the Global Agenda Council on IP – and WIPO to help under-resourced inventors from developing countries. My role has been to develop the idea and to coordinate its implementation,” Aleman told Intellectual Property Watch.

The IAP is “the first global programme of its kind” and is aimed at making the patent system more accessible.

“The programme aims to increase patent filing in developing countries and reduce the rejections of patent applications, due to failure of compliance with formalities and hence increasing the inventor’s chances to reach the stage of substantive examination,” Aleman explained.

According to the IAP Guiding Principles, inventors who are resident in the participating countries and whose income is below the threshold determined by the country in question can benefit from expert support. This is provided they have basic knowledge of the patent system and their invention qualifies under the IAP.

The role of pro bono attorneys may consist of assisting inventors to: file a patent application, prepare correspondence with the patent office, liaise with foreign patent attorneys in the case of international applications, and in general help with the patent application process, as explained in the Frequently Asked Questions (FAQ) section.

The exact scope of services is to be defined through an agreement between the volunteer patent attorney and the inventor, it adds.

Eligible applicants are matched with pro bono attorneys on the basis of the field of the invention and the attorney’s knowledge or expertise, the section notes.

Pro bono attorneys provide “a free kick-start to the use and development of the patent system in developing countries,” it says, while “their work helps spur innovation at the grassroots level and also allows them to develop their professional skills in new, rewarding ways.”

One of the main challenges is that pro bono services are not popular in developing countries, Aleman said.

Also, out-of-pocket fees will continue to be borne by the inventors, he said, and it is important to identify mechanisms to reduce those fees.

The third challenge is to provide inventors with pro bono assistance not only in their own country but also in developed countries in order to bring more economic value to their inventions, Aleman added.

The programme claims to benefit not only inventors and patent attorneys but also governments and patent offices by promoting innovation and reducing backlogs at national or regional patent offices. This is “since applications compiled with legal assistance are more likely to be in good order and therefore more straightforward to process than those compiled without an attorney,” the FAQ section says.

“A wide number of actors stand to benefit from the IAP,” Aleman said. “Firstly, inventors will receive adequate technical assistance to be able to navigate the complex process of patent prosecution. Secondly, patent offices will be able to interact with specialists and receive well-presented applications.”

“Society also benefits, since a number of inventions will be disclosed this way, thereby contributing to technological progress,” he said. “Last, but not least, patent attorneys stand to gain in the long run as helping to improve the economic situation of inventors results in future clients.”

The programme’s website explains that the WIPO-WEF IAP is composed of countries, sponsors, and pro bono patent attorneys. These three groups all constitute WIPO-WEF IAP members.

The IAP’s central governance body is the Steering Committee, which provides overall strategic direction, guidance and support.

“WIPO is the clearing house, among other things. It coordinates the implementation and functioning of the programme at the local level, manages and administers the online training course, administers the roster of pro bono attorneys, and finally, at the country level, matches eligible inventors and patent attorneys,” Aleman explained.

“Next year,” he said, “the Steering Committee will decide whether that programme is mature enough to become a permanent collaboration between WIPO and the Forum, and expand to other countries that wish to join the programme.”

Elena Bourtchouladze (LLB, DEA) holds a PhD degree in Public International Law from the Graduate Institute (Geneva) with focus on the WTO TRIPS Agreement and WIPO Conventions. She is a researcher at IP-Watch, and has experience in regulatory and litigation at a multinational company and an international organisation.