Inventor assistance program enabled small-town entrepreneur to patent his invention
Travis Kelley grew up in the rural Pine River area of northern Minnesota, near Brainerd. After graduating from high school in 2004, he worked stacking wood with his uncle at a lumber yard in the Twin Cities. That led to a sales job, and for a couple of years he sold lumber.
The sales gig took him back up north, where he became a territory manager for building materials company J.B. O’Meara. In that role, he says, he picked up “a lot of tactical knowledge about door installation.”
Yet when he tried to install a door on his first child’s room, that knowledge didn’t help much. “Holy cow, was I bad at it,” he recalls.
He went about creating a solution. Knowing that a door must be level and plumb in both directions within an eighth of an inch to be hung correctly, he started developing a product that would be easy to use for even door-hanging novices. Using cardboard and glue to make his first prototype, Kelley realized he might just be on to something.
The next step wasn’t quite so easy. After searching on the Internet for patent attorneys, he began to realize how expensive it would be to get legal assistance in filing a patent application for his invention. He went about the first part by himself, filing an initial provisional application with the U.S. Patent & Trade Office (USPTO) in 2010.
Much to his surprise, the USPTO responded, saying it saw substance in his application and encouraging him to reach out to the Minnesota nonprofit LegalCorps for assistance in obtaining an official patent. “If I hadn’t gotten a letter from the patent office, I would have never called LegalCorps,” he says.
Established in 2004, LegalCorps provides free legal assistance in transactional matters to low-income entrepreneurs, innovators, and small nonprofits in the state. The organization provides legal services exclusively through volunteer business lawyers. Last year, it had approximately 540 attorneys on its volunteer rosters.
In 2011, LegalCorps launched its Inventor Assistance Program to help low-income entrepreneurs and inventors with obtaining patents. Available to Minnesotans only, it allows inventors with good ideas to overcome some of the financial roadblocks they might face trying to bring a new idea to market.
Kelley contacted LegalCorps in 2011 and was matched with patent attorney Kate DeVries Smith of the Minneapolis-based law firm Pauly, DeVries Smith & Deffner.
As a patent lawyer, DeVries Smith knew the patent application process is expensive and intimidating for an entrepreneur or startup — even if the invention is outstanding. A typical mechanical application costs from $7,000 to $10,000, and sometimes more, to get, write, and file with the USPTO, she says.
Because of her experience in mechanical patent applications and building construction components like doors and windows, DeVries Smith was able to hit the ground running. Already familiar with the concepts and vocabulary of the industry, she was also able to utilize systems and processes in place at her own law firm.
Kelley, she notes, was articulate in explaining his door-hanging system to her, even using drawings and video demonstrations. “Working with [Kelley] was even more fun that I would have guessed,” she says. “He is sharp, enthusiastic, curious, grateful, and very hard-working.”
His invention, she adds, “is simple and inexpensive but makes door installation easy, fast, and accurate. I understood quickly why he was so enthusiastic about it — and became enthusiastic myself.”
DeVries Smith wrote and filed the full non-provisional patent application. It expanded on the concepts Kelley had laid out in his provisional application, and DeVries Smith ensured that it conformed with U.S. statutory and regulatory standards and was in a good condition to be examined by the USPTO. “Happily, my time putting the application together paid off when it was allowed by the Patent Office right away, which is a rare occurrence,” she adds.
Kelley received his 26-page patent for the door-installation tool in March 2014, after working with LegalCorps for about three years. “I now have a full utility on the patent and process, and how to use the tool,” he says. “Without LegalCorps, I wouldn’t have the patent.”
Since LegalCorps’ services are free of charge for program participants, the entire patent cost Kelley about $1,000 for the filing fees.
While going through the process to obtain his patent, Kelley worked with door manufacturer Therma-Tru and its engineers to perfect the product design. (He had a connection to the company through his time at J.B. O’Meara.)
In addition to putting down some of his own money to get molds made and begin production, Kelley also applied for startup funding through his county’s economic development corporation. He received a combination of loans through the Initiative Foundation (ifound.org) and Crow Wing Power, a rural electric cooperative in Brainerd.
In 2011, Kelley and his wife, Jennifer, co-founded JenTra, which now sells the door-installing tool under the brand Cheetah. The company has since developed three variations of the product. To date, it’s sold approximately 6,000 tools and has its products in about 70 retail stores.
Kelley and his company are gaining traction as word of the Cheetah spreads. Builder Magazine featured the product in its pages, describing it as “an ingenious door-installation tool that will speed and ease the way things are done.”
Kelley was also recognized by the Minnesota Cup in August 2014 as a runner-up in the “general” division of the 2014 statewide entrepreneurial competition.
“He’s got a terrific product,” says Michael Vitt, executive director of LegalCorps, one of the three paid staff members there.
Nationally, the LegalCorps Inventor Assistance Program is widely considered the first successful program for providing free legal representation to low-income inventors seeking to patent their inventions with the USPTO. It was founded with the assistance of co-founding law firms Patterson Thuente IP, Lindquist & Vennum, and Meyer & Njus, along with the encouragement of the USPTO and support of a group of Minnesota corporations and law firms.
Through the program, inventors can receive assistance during the second stage of the patent application process: the non-provisional application. They must have already done the first stage, the provisional application, which enables an inventor to claim “patent pending” status for a limited time. The second stage, the non-provisional application, can result in an issued patent.
Once an inventor files an application with LegalCorps, they go through another round of checks to make sure the idea is viable and there are no conflicts with the assigned patent attorney or the applicant’s business.
Since 2011, the organization has matched 61 inventors with patent lawyers, and 16 have obtained patents. Currently, the program has approximately 30 open patent applications on file with the USPTO. LegalCorps also provides low-income innovators with free legal assistance for licenses, contracts, business organization formation, and other non-patent matters.
For those inventors who have not yet filed anything with the USPTO, LegalCorps runs facilitating workshops in conjunction with the Hennepin County Library system. Held about three times a year, the workshops instruct participants on how to file a provisional application for a patent. “We hope these workshops empower them to go ahead and do the provisional application, and then they can apply for the Inventor Assistance Program,” Vitt says.
The program serves as a model for similar ones emerging elsewhere in the nation. One example is the William Mitchell Inventor Assistance Program at the William Mitchell College of Law in St. Paul. Established in December 2014, the university-affiliated program is available for inventors from Iowa, North Dakota, South Dakota, and Wisconsin.
It, too, enables free legal representation for low-income inventors seeking to patent their inventions with the USPTO, connecting them to law school students and volunteer attorneys. “As the USPTO was looking to expand the pro bono patent program, they thought it would be best to do it on a region-by-region basis,” says law professor Jay Erstling. “When it came to the five states in the Upper Midwest area and a body that could work with LegalCorps in administering this expanded area, William Mitchell was a natural match.”
Erstling, who serves as the supervisor of the program, also started the Intellectual Property Law Clinic at William Mitchell, one of the first clinics certified by the USPTO allowing students to file applications for patents. Inventors who have not filed provisional applications with the USPTO can also request assistance on that from the clinic.
Similar to LegalCorps, applicants must have already filed a provisional application with the USPTO to be considered for the William Mitchell Inventor Assistance Program. The program then assists applicants in turning their provisional applications into non-provisional patent applications, and also responds to office actions or other communications from the USPTO.
In early 2014, President Obama called on the USPTO to facilitate the establishment and expansion of patent pro bono programs throughout the United States. As part of that executive action, Jennifer McDowell was appointed as the USPTO’s pro bono coordinator in July 2014.
Given the importance of such programs, the USPTO opted to establish a team of attorneys to work alongside her. Together, they are interfacing with bar organizations and nonprofits to establish programs nationwide to connect under-resourced inventors with volunteer patent attorney representatives.
“As the first patent pro bono program in the United States, the LegalCorps Inventor Assistance Program pioneered the way for other programs across the country,” McDowell says.
Two Minnesota lawyers integrally involved in the formation of the program wrote a how-to guide for others to utilize in establishing their own programs. Patent Law Pro Bono: A Best Practices Handbook, written by Amy Salmela and Mark Privratsky in 2012, shares best practices from the program.
Since LegalCorps opened its doors to Minnesota inventors in 2011, 13 other regional programs have started operations across the country. Currently, 45 states are covered by one of 14 regional programs. “While each of these programs set their own operational criteria, the key factors set forth by the Minnesota program — primarily a robust intake, screening, and referral process — are present in every program,” McDowell says.
As for Kelley, to him the program initially “seemed too good to be true,” especially since at the time he was an inexperienced, low-income entrepreneur in a rural area. Luckily for him, the program was real — and he now has a valuable patent and a growing company with a well-received product.