Edging Out a Patent with Notre Dame Law Students

Author: Denise Wager

When Jeff Ballard, president of Design Align Landscape Edging in South Bend, knew he had developed a product for the commercial landscaping industry, he wanted to see what legal recourses he had to protect his intellectual property and ultimately bring it to market.

He turned to the South Bend Chamber of Commerce Small Business Advisory Group who recommended that he seek a patent for the product, which he calls a “Gap Lock” connector. However, he was not prepared to spend the thousands of dollars or the significant investment it would take to obtain a patent.

The Chamber suggested that the Notre Dame Law School Intellectual Property Clinic might be willing to take him on as a client free-of-charge. Ballard contacted the Clinic and now, just two years later with the help of law students, he owns the patent on his invention. He is already in the process of securing a manufacturer for his Gap-Lock connector and is moving forward with manufacturing and marketing the product to commercial landscapers.

“Without the Notre Dame Intellectual Property Clinic, my design drawings would be filed away somewhere,” Ballard said. “Having a patent is very impressive when you are out developing and marketing your product. Without it I wouldn’t have been able to move forward.”

Ballard is just one of the many clients the Notre Dame Intellectual Property Clinic has worked with since its start in 2012, and the first to get a utility patent approved. Average time from filing of a utility patent application to issuance of a patent is close to three years.

The Clinic operates as a small law firm and is composed of approximately 10 Notre Dame 2L and 3L students each semester. They are guided under the close supervision of the clinic director, Jodi Clifford, a patent attorney with a decade of private practice experience.

It started as a small pilot program of four students in 2012. Since then, almost 40 students have participated in the Clinic. Students work directly with clients in groups of two to three. In addition to performing patent and trademark searches, preparing opinion letters and filing and prosecuting both patents and trademarks before the Patent & Trademark Office, students also assist clients with strategies for protecting intellectual property, copyright issues and licensing of intellectual property.

For Ballard’s patent, the students went through the entire patent process with him through a two-year period. They started with a search and analysis to identify existing products within the landscape industry that might be similar and to illustrate how Ballard’s invention was different. After that, students filed the formal application and prosecuted it before the Patent & Trademark Office, responding to rejections and arguing for Ballard’s patent.

“The students I worked with at the Clinic were so thorough with the patent writing, covering all the variations, means, and methods of attachment for this type of product,” Ballard said.

The examiner had found two different existing products they said could be combined to make a product similar to Ballard’s. However, Ballard knew that the combination would never work.

“The students fought off that examiner’s claim and were able to easily defend the patent,” Ballard said.

The Notre Dame IP Clinic is certified with the U.S. Patent Office and is one of very few law schools in the country that operate a clinic of this nature.

”Most clinics that do patent prosecution use outside counsel to supervise their work,” Clifford said. “We operate as a standalone clinic and all of the work and supervision is done within our clinic.”

Being a part of the Clinic provides students with valuable experience in applying substantive intellectual property law to client problems, and offering assistance to local businesses and entrepreneurs with counsel on intellectual-property related issues.

The Clinic gets great response from potential employers, Clifford said. And students have found it extremely beneficial in the job market to talk about the work they did at the Clinic.

William Collins, ‘13 J.D., now a patent litigator at Winston & Strawn in Houston, found his experience working on Ballard’s patent and with the IP Clinic to be invaluable.

“The IP Clinic is the most valuable course an IP law student can take in law school,” Collins said. “I am directly applying the skills I learned from Jodi and the IP Clinic course to my current practice. It allowed me to bring practice experience to my firm right at the start of my career.”

Clients come to the Clinic in a variety of ways. Local entrepreneurs in South Bend and northern Indiana, such as Ballard, usually find out about it through the Chamber of Commerce, the Patent & Trademark Office website or word of mouth. The Clinic has also served clients of Notre Dame’s Innovation Park, a research park that helps transform innovations into viable marketplace ventures. Notre Dame’s Technology Transfer Office is also a client.

“We prioritize clients that would not otherwise be able to obtain IP counsel,” Clifford said. “For example, frequently, recent graduates and new businesses are unable to afford counsel. We have had several clients that are Notre Dame Alumni, including graduates of Notre Dame’s Industrial Design program and the Business School.”

Marco Antonio Magallon, ’11, MS ’12, is an alumni client of the Clinic. He has developed a location-based social network mobile application, SwoopIn, that provides users with an intuitive and informative map to create and discover events around them. The Clinic assisted him with trademarking his application name and logo so that he can build his brand. They are also helping him with a privacy policy and terms of use for his website and mobile app.

“The IP Clinic students were great to partner with,” Magallon said. “They put in a lot of hours on my project and were passionate about it.”

The Clinic is successful because of the team approach that Clifford has put in place.

“I really felt like we were all part of the same seamless team while working on my patent,” Ballard said. “Jodi and the students worked with me to put together an amazing strategy and that was the key to getting my patent approved.”