Brad D. Pedersen

Partner - Patent Attorney


Patent Lawyers
Brad Pedersen is a rare phenomenon: An attorney with a deep understanding of high-technology, start-ups and patent law, coupled with a passion for innovation and telling the stories of entrepreneurs.
 
With more than 30 years of experience in patent prosecution and transactional intellectual property law, Brad serves as chair of the patent practice group at Patterson Thuente Pedersen, P.A and focuses primarily on post issuance proceedings at the USPTO, patent prosecution strategy, licensing, and litigation. His clients are innovators in high-technology, computers, software, and medical devices. As an inventor, entrepreneur and former in-house counsel, Brad has a real-world foundation from which to create effective IP portfolios and strategies.
 
Brad is currently on the Board of Directors of the American Intellectual Property Law Association (AIPLA) and is co-author of the Bloomberg BNA treatise, Patents After the AIA (America Invents Act): Evolving Law and Practice (2016). Brad is a named inventor on more than a dozen issued US patents on technologies ranging from medical devices to unmanned aircraft. He is a graduate of the Singularity University Executive program (SE Fall 2010).
 

Case Studies

  • Argued one of the first Oral Hearings for an Inter Partes Review proceeding on behalf of a patent owner, Helferich Patent Licensing
  • Represented Polaris Wireless in an Inter Partes Review proceeding involving challenge to the Constitutionality of review proceedings under the America Invents Act
  • In-house counsel for ICD startup Angeion Corporation—responsible for the development and management of a portfolio of 250+ patents and applications that were used to generate more than $60 million in licensing revenue when Angeion decided to exit the industry
  • Developed and managed the patent portfolio for supercomputer company SSI that was sold for more than $20 million
  • Successfully represented the junior party, Spineology, Inc., in an interference proceeding over spinal implant devices
  • Patent law expert in the patent infringement lawsuit between Sun Microsystems and Cisco over advanced features of router technology

Other

  • AIPLA Board of Directors, 2016 – 2019
  • Named inventor on more than 10 issued U.S. patents and a dozen pending applications on technologies ranging from medical devices to unmanned aircraft
  • Involved as a founder in three different startup companies
  • Approved Opining Counsel for Intellectual Property Insurance Services Corporation (IPISC)
  • Provided pro bono representation for the homeless and individual inventors

Accolades

IAM Magazine Patent 1000, 2013 – 2016
Best Lawyers in America 2013 – 2017
Minnesota Super Lawyers® 2008 – 2016
Minnesota Lawyer, 2012 Attorneys of the Year
Twin Cities Business, The Black Book, Best Lawyers
Minnesota Intellectual Property Law Association, President’s Award 2012
PatentBuddy Top Patent Prosecutor

Memberships

Minnesota Intellectual Property Law Association (MIPLA) – Chair of IP Law Revisions Subcommittee
American Intellectual Property Law Association (AIPLA) – Board Member
Minnesota State Bar Association (MSBA)
Association for Computing Machinery (ACM)
Institute for Electrical & Electronics Engineering (IEEE)
National Editorial Board member, Thompson Reuters, Ideas On Intellectual Property Law

Education

South Dakota State University, B.S., Electrical Engineering, 1981, Four-Year Briggs Scholarship
University of Minnesota, J.D., 1986, cum laude
Singularity University, Exponential Technologies Executive Program, 2010

Admissions

U.S. Court of Appeals for the Federal Circuit
U.S. District Court, District of California
U.S. District Court, District of Minnesota
Supreme Court of Minnesota
Supreme Court of California
United States Patent & Trademark Office

Publications

Presentations

  • “Patents After the AIA: Evolving Law & Practice Under Section 102,” AIPLA 2016 Chemical Practice Boot Camp, Minneapolis, MN, May 2016
  • “Patents After the AIA: Evolving Law & Practice,” AIPLA webinar series, April – May 2016
  • “The Bar’s Response to Proposed Rule Changes,” AIPLA/USPTO Road Show Series, August 2015
  • Panel on Administrative Aspects (Non-Hearing) of AIA Trials, AIPLA|USPTO PTAB Bench and Bar Conference, Alexandria, VA, June 2015
  • “UAVs and IP Law,” Robotics Alley Conference, September 2014, Minneapolis, MN
  •  PTAB AIA Trial Roundtable, May 2014, Detroit, MI
  • “AIA Patent Etiquette for Effective Filing Dates and Other AIA Best Practices,” 9th Annual Advanced Patent Law Institute, January 2014, Alexandria, VA
  • “First-Inventor-to-File: Problems, Ambiguities and Practical Solutions,”  9th Annual Advanced Patent Law Institute, January 2014, Alexandria, VA
  • “Automated Snapshot Capture,” USPTO Software Partnership Meeting, December 2013, Alexandria, VA
  • “Patent Trial & Appeal Board (PTAB) Review Proceedings—Lessons Learned and Other Observations from Both Sides of the Bench in the New Review Proceedings, AIPLA 2013 Spring Meeting, Seattle, WA, May 2013
  • “Stats and Insights From Six Months of Review Proceedings,” Advanced Practice Under the America Invents Act Conference, Institute for Law and Technology and AIPLA, Dallas, TX, April 2013
  • “First-to-File: Final Rules and Guidance – Navigating Significant Changes to Derivation Practice, What Constitutes Prior Art and More,” Strafford webinar, March 2013
  • “The America Invents Act: What You Need to Know,” National CLE Conference, Snowmass, CO, January 2013
  • “First-Inventor-to-File (FITF) and Other AIA Prosecution Changes: What’s Your Strategy?” Midwest IP Institute, Minneapolis, MN, September 2012
  • “The America Invents Act (AIA),” National Institutes of Health, Besthesda, MD, June 2012
  • “2012 and Beyond: Future Technology,” moderator, Minnesota High Tech Association (MHTA) Annual Conference, Minneapolis, MN, April 2012
  • “The New Prior Art and Priority Landscapes: First-to-File with Grace and Derivation Under the America Invents Act,” Connecticut Intellectual Property Law Association, Stamford, CT, March 2012
  • “Patent Reform: First to File Provisions,” Strafford webinar, November  2011
  • “Overview of the New Patent Law,” Minnesota CLE, October 2011 (conference chair)
  • “The America Invents Act (AIA). STEP’s Contributions, the Likely Impact and Future Issues with the AIA,” National Science Foundation Science, Technology, Engineering and Mathematics Talent Expansion Program, Arlington, VA, October 2011
  • “America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice,” Practicing Law Institute, September 2011
  • “Patent Reform Update: What it Means for Practicing Patent Lawyers,” 2011 Midwest IP Institute, Minnesota CLE, September 2011
  • “Fringe Effects, Strategic Considerations and Counsel for the Parallel Universes of Patent Litigation, Reexaminations and Interferences,” ABA 26th Annual Intellectual Property Conference, Arlington, VA, April 2011
  • “Claiming Strategies for Medical Device Patent Applicants + Bonus Update on Patent Reform: New Laws and Rules,” Patent Protection for Medical Devices: Law & Strategy, Minnesota CLE, Minneapolis, MN April 2011
  • “Protecting Your IP Rights Globally Identifying Infringers & What To Do” Thomson Reuters IP Leadership Exchange, Chicago, IL, April 2010 & New York, NY, June 2010
  • Participant in USPTO-Patent Public Advisory Committee Quality Task Force public roundtable on Enhancement of Quality in Patents, Los Angeles, CA, May 2010
  • “Inter Partes Reexam,” Board of Patent Appeals and Interferences Annual Board Conference, Washington DC, April 2010
  • “Patent Law Reform Update: What it May Mean for the Average Practitioner,” MN-CLE, March 2010
  • “The Changing Role of Patent Strategy,” LifeScience Alley R&D SIG, September 2009
  • “Open Source: What Your CEO Needs to Know,” Minnesota Information Professional Society 13th Annual Education Seminar, St. Paul, MN – April 2008
  • “The Changing Landscape of Patent Law,” University of Minnesota Design of Medical Devices Conference, Minneapolis, MN – April 2008
  • “The New PTO Rules,” (co-presented with Deputy for Patent Examination Policay, John Love), Midwest IP Institute (Midwest CLE), Minneapolis, MN – September 2007

Brad D. Pedersen612.349.5774pedersen@ptslaw.com