NIU Law Professor and Former Student Drive Patent to the Finish Line
October 4, 2012
DeKalb, Ill.--As a long time auto enthusiast, NIU Law Professor John Walton has been a spectator at professional car racing events since attending the 24 Hour Race at LeMans, France in 1974. Several years ago, Walton took the opportunity to go a few laps around the track in his own car at an amateur Porsche Club event called “Drivers’ Ed.” He was hooked and began driving “DE’s” every summer. In 2007, while attending a DE and Club race at Road America in Elkhart Lake, WI, he saw some fellow drivers having difficulty with a relatively rudimentary auto repair practice - jacking up a car. The wheels of Walton’s mind started moving, his thoughts turned into actions, his actions turned into an invention, and his invention required a patent. Little did he know, a law student would be instrumental in helping to accomplish this goal.
Professor Walton, who teaches intellectual property, business organizations, pretrial, and entertainment law, can now add inventor and patent holder to his list of credentials. Concerned about his own safety as well as the safety of others, Professor Walton invented a jack stand designed to hold a car up after it has been lifted with a jack. His design allows one to jack up the car on the factory designated spot, put the jack stand in the same spot, lower the car onto the stand, and remove the jack. The jack stand is also designed to match the shape of the reinforced spot on the chassis so the car can't slip off, an issue that leads to over 90 percent of all jack stand-related failures.
“If a car is going to be worked on, it should be placed on a jack stand,” Walton says. “Most cars today have designated locations where a jack should be placed, but that jack placement blocks the best place to put a jack stand,” he added.
Jack stands were invented about 90 years ago when cars had a frame to which the body of the car was attached. The separate frame was strong enough to support the weight of the car anywhere on the frame. But in the 1960's, auto manufacturers started building cars using a method that eliminated the separate frame and made the main body and frame a unified or single structure. With this modern unibody construction, there are generally only four spots on the car’s chassis designated by the manufacturer to lift and support the vehicle’s weight.
Professor Walton built a cardboard model of his design to test his theory before getting a steel prototype built, which he tried first on his own car. The new jack stand worked and Walton saw an academic opportunity to take an invention through the patent process and enhance his teaching in intellectual property.
He first drafted a Provisional Patent Application for the jack stand in March 2008. At that time, Professor Walton was supervising then NIU Law student Mike Chinlund on an unrelated research project. Mike, who was working as a patent agent for the Chicago law firm Marshall, Gerstein & Borun LLP (MGB), and former NIU Law Professor Sam Oddi, provided Professor Walton with helpful expertise, as Walton had not been through a patent process before.
Following graduation from NIU Law, Mike, who had already passed the patent bar exam, continued working at MGB, now as a patent attorney. After discussing the invention with his brother Greg Chinlund, who also is a 1996 NIU Law alumnus and partner in the MGB firm, Mike offered to prosecute Walton’s final patent application pro bono.
“Initially, our collaboration focused on converting the provisional patent application into a non-provisional (or regular) patent application. This process involved identifying novel aspects of Professor Walton’s invention and drafting claims directed to those aspects. Professor Walton’s technical expertise combined with our claim drafting skills resulted in a strong set of claims,” said Chinlund.
Chinlund and Walton completed the final patent application by March 2009. It was published by the United States Patent and Trademark Office seven months later. The Professor and former students turned advocates and mentors then waited until the fall of 2011 for the patent examiner’s initial decision. The examiner allowed five critical claims of the 20 in the application and objected to or rejected the remaining 15. The five allowed claims constituted a victory, but Chinlund and Walton scrutinized the examiner’s arguments supporting the objections and rejections and thought they could be effectively rebutted. Chinlund recommended conducting a telephone interview with the examiner to discuss the objections and rejections.
“We saw an opportunity to advance the application to allowance while providing Professor Walton an opportunity to interact directly with the examiner during the prosecution process. Professor Walton is very good at relating actual practice experience to his students and this examiner interview will add to his arsenal of practice tips,” said Chinlund.
In November 2011, they defended the remaining 15 claims, and on January 26, 2012, they received a Notice of Allowance granting protection on all 20 claims in the patent application.
“For me, one of the most exciting parts of the process was responding to the examiner's challenges and figuring out that just a few words in the patent claims could make the difference between an allowance and a rejection,” says Walton.
“The experience was valuable to Professor Walton and very rewarding for Mike and me,” Greg Chinlund commented. “I know Mike had fun interacting with Professor Walton during preparation and prosecution of his patent application and Professor Walton was able to broaden his knowledge of patent prosecution – something that will benefit NIU College of Law students.” He concluded that, “It was rewarding for me to be able to re-connect with a former professor and to provide our firm’s expertise on a pro bono basis.”
The whole process took about four years, with the final patent issued on May 22, 2012 and the patent document arriving about a month later. Although there were some challenges along the way, for Professor Walton, it was worth the wait and effort.
“The most rewarding part of the process was getting to work with and learn from our alumni Mike and Greg Chinlund. I had only studied patent law from an academic perspective and had no background in patent prosecution. The method for deconstructing processes and converting them into drafted claims is truly a practice different from any other in the law.” He added, “Marshall, Gerstein & Borun LLP fully supported Mike’s pro bono prosecution of this patent, and the result was outstanding. I believe everybody won – NIU Law, Mike, the MGB firm and me.”
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