March 1, 2012 6:50 PM

With Pro Bono Project, Baker McKenzie Takes Aim at World’s Social Ills

Posted by Sara Randazzo

It’s not often that a press release about a press release catches The Am Law Daily’s eye, but that’s exactly what happened when Baker McKenzie alerted us to a new pro bono project it’s involved in.

As announced by the White House last month, Baker is teaming with the nonprofit group Global Access in Action to promote a new U.S. Patent and Trademark Office initiative, Patents for Humanity, designed to encourage companies to use their intellectual property in altruistic ways abroad.

The program, which began Thursday, is fashioned as a competition. The PTO will consider the first 1,000 applicants who can clearly show they are using patents they hold related to food and nutrition, as well as to medical, information, or clean technology, to improve the health or lives of an impoverished population. From that group, the agency will pick up to 50 winners this fall. Those chosen will receive a voucher good for an accelerated future patent application, a patent reexamination, or a patent appeal.

The incentives, particularly the option to accelerate a reexamination, should be a major draw, says Baker McKenzie global intellectual property chair John Flaim, who only half-jokingly says he has represented a client with a reexam pending before the PTO for the entire span of his 12-year-old son’s lifetime.

It probably feels that way. It currently takes nearly three years on average to get a patent approved, a year and a half on average for a reexamination, and more than two and a half years for an appeal, according to the PTO. The Patents for Humanity program is the latest in a series of initiatives the agency has launched in recent years in hopes of cutting into a backlog of 650,000 patent applications awaiting approval. This program is the first to offer the prize of accelerated action on reexams or appeals, and the first to reward uses of technology rather than the technology itself.

For their part, lawyers and staff from Baker McKenzie, working with the Berkeley-based Global Access in Action, will develop training programs to teach corporate law departments and others the basics of the patent office’s contest and why it’s important to use technology for humanitarian purposes. The firm is just beginning to contact its clients to gauge their interest in attending its presentations, and Global Access in Action is also working to sign up interested parties. The American Bar Association will also help build awareness about the program.

While noble in its intentions, using intellectual property to do good presents a host of challenges for companies so inclined, according to Global Access in Action CEO and president Sara Boettiger. Those include: finding partners abroad to help distribute new forms of technology, learning other countries’ rules for enforcing patents, and protecting the commercial viability of IP assets domestically while using them internationally. Baker McKenzie hopes to help companies and universities interested in participating in the program address those issues.

Quentin Palfrey, senior advisor for jobs and competitiveness in the White House’s Office of Science Technology Policy, says Baker McKenzie, Global Access in Action, and the ABA can play crucial roles in helping the project gain momentum.

“They can help get lawyers to think about which of their clients can benefit from the program and can help us get the word out that this is a program that their clients can take advantage of,” Palfrey says.

Baker’s Flaim says Patents for Humanity is a departure from the norm for the PTO, which typically focuses on protecting the domestic uses of intellectual property. “It truly is groundbreaking and a new paradigm for the patent office,” Flaim says, noting that it is also a rare example of a patent-related pro bono project. “On the trademark side, we’ve been able to help companies get protection throughout the United States, but we have struggled on the patent side to get projects that could help us give back to the community.”

Flaim will lead Baker McKenzie’s work on the assignment along with Kevin O’ Brien, chair of the firm’s North American IP practice, and Madeleine Schachter, the firm’s global director of corporate-social responsibility.

It was Schachter’s relationship with Boettiger that got Baker McKenzie involved in the project. The two became acquainted on a related pro bono project that saw lawyers in Baker’s London office offer legal advice to the World Economic Forum Young Global Leaders on how to balance the humanitarian use of patents with the commercial interests of intellectual property holders.

Boettiger says the firm’s work on the new initiative will be invaluable as her organization and others trying to convince corporations to get involved in such efforts. “We need to get past reinventing the wheel every time to the point where we have a body of knowledge we can share,” Boettiger says.

On its Web site, Global Access in Action lists several ways in which patents have been used for humanitarian purposes, including the creation of a postage-stamp sized paper diagnostic test used to screen for HIV/AIDs and tuberculosis and the production of a vitamin- and mineral-enriched grain made using reconstituted rice put through a pasta-making machine.

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