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College of Law announces new patent clinic

September 15, 2009

The Sandra Day O'Connor College of Law at Arizona State University has joined the ranks of a handful of law schools across the country that offer students specialized training in protecting the creative property of inventors.

The provisional Lisa Foundation Patent Law Clinic is the brainchild of prominent Chicago patent attorney Steven G. Lisa, a 1984 alumnus of the College of Law. Through Lisa's foundation, the clinic has received $100,000.

The announcement by Dean Paul Schiff Berman brings the number of clinics at the College of Law to nine.

"As part of our initiative to create a new model for public legal education in the 21st century, we want law students to learn how to be lawyers to the entrepreneurs and innovators of tomorrow," Berman says. "Thus, it is with particular excitement that we launch this new clinical program."

Lisa's original patent program was housed several years ago at Arizona Technology Enterprises (AzTE), then was moved to the law school's Technology Ventures Clinic, now the Technology Ventures Services Group. He also created the Lisa Fellowship program, along with a Lisa Foundation Award that annually is given to an outstanding third-year student who makes significant contributions to the College's Center for the Study of Law, Science, & Technology.

Lisa, of The Law Offices of Steven G. Lisa, Ltd., credited the College's leadership, under previous Dean Patricia White and now under Berman, with moving the patent clinic forward.

"I was prompted to create the fellowship at the College of Law because I was rewarded with a great career and was at a point between my caseload where I could devote some time in addition to the financial resources necessary to get programs off the ground," he says. "That started out jointly with AzTE, but transitioned to the law school with the goal of establishing a clinic after AzTE indicated that it could no longer host the program. First Dean White and now Dean Berman were committed to keeping the program going. That commitment kept me committed."

The three-credit clinic is a natural extension of the College's Center for the Study of Law, Science, & Technology, which attracts students from around the world who want to study the intersection of science with law and policy.

Among them are Michelle Gross, a patent agent at the Tempe intellectual property law firm of Booth Udall, and a 2009 alumna of the College of Law and former Lisa Fellow. Clinic students meet weekly with Gross, the adjunct clinical manager, to reinforce the concepts they've learned in the course, Patent Licensing and Enforcement. The course is taught by Lisa and Jon Kappes (Class of 2006), an attorney at the Lisa firm and a Lisa Foundation Award winner.

Because of her patent agent experience within the Lisa Fellowship program, Gross was "head and shoulders above where most students are when they graduate," says Kappes, and is an ideal choice to head the clinic.

The students receive hands-on experience in real-world patent prosecution, licensing and litigation, and currently are working with three clients and soon will add three more. The students learn to think about patent work in the holistic way that Lisa practices it — from both the patent application and acquisition perspective and from the enforcement side, Kappes says.

"These are significant branches of patent law, and they often don't overlap in law firms," says Kappes, noting the end goal is to have a high-quality patent. "This is enormously beneficial for these students, because most of them will end up working in one of these two fields, and whichever direction they go, they will have gained important insights into both."

Clinic student Jason Gonzalez worked for several years as a paralegal in patent prosecution at two California law firms before choosing the College of Law, citing its Center for the Study of Law, Science, & Technology.

"I love working in patent law, and not just because you're involved in important technology, such as a diabetic testing device, cutting-edge anti-cancer chemicals and GPS devices for cell phones," he says. "But you work with a lot of interesting people, from the chief patent counsel at a major pharmaceutical company to the single-inventor tinkering in his basement, and they each need protection for their inventions."

Gonzalez and other clinic students are immersed in a challenging, fast-paced curriculum, and have been given the freedom to work as lead contacts with several inventors, under Gross's supervision. He recommended the clinic for any law student interested in technology.

"Whether or not you have any experience with intellectual property, the clinic will bring you up to speed," Gonzalez says. "It's a steep learning curve, but if you put in the hours, it's a huge reward. You'll have a marketable skill set that puts you ahead in this tough economy."

The clinic is a plus for inventors who can't afford obtaining a patent, a process which typically costs a minimum $10,000, and easily can escalate to $100,000; litigation charges can run into seven figures, Kappes says.

"Most of the clients don't have the financial resources to have this work done on the outside," Gross says. "They are asked to make a small, modest donation now, but we're really hoping some of the companies and individuals will be financially successful and will be able to make more substantial donations in the future."

Noel Ross of Chicago is one of those inventors who wouldn't have been able to afford to file for a patent on her product, the EZstringer, if not for the College's patent clinic. The product is a plastic device that can be used to quickly thread drawstrings that have become separated from hoodies, sweatpants, cargo pants, bikini tops, pajama bottoms, hospital scrubs and other apparel items.

Last year, fed up with using coat hangers or safety pins to try to repair detached drawstrings, Ross collaborated with a friend who designs jewelry to put together the prototype. Ross, a commercial real-estate agent, contacted Lisa, who put her in touch with the clinic.

"I had talked to other attorneys, and I saw they just wanted to move forward, run another through the mill, and there wasn't a lot of shared excitement or enthusiasm," she says. "The clinic has been such a great balance of back and forth. The law students have helped me push myself and to make sure all my ideas are out there.

"This was the most remarkable experience I could have set up," says Ross, a former ASU engineering student whose product could be on the market within three months. "It's a beautiful thing to offer."

Janie Magruder,
(480) 727-9052
Sandra Day O’Connor College of Law