Jay A. Erstling

Of Counsel


Patent Lawyers
Jay Erstling is an important advisor to our clients who are doing business on an international scale, as well as those who are considering expanding into global markets. He provides a unique and valuable perspective gained through his career in international IP strategy and role in shaping international intellectual property law policy.

 
Prior to joining Patterson Thuente IP, Jay served as Director of the Office of the Patent Cooperation Treaty (PCT) and Director-Advisor to the Director General of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, where he was instrumental in reforming PCT policy and expanding and modernizing the PCT system.
 
The services Jay provides relating to PCT and international IP protection:
  • Advice on international patent strategies, PCT issues and IP portfolio management
  • International portfolio and strategy audits
  • Risk analysis, containment and management
  • Advice on reinstatement of rights
  • Training on best practices
  • Strategic assistance with challenging cases
  • Bridging relationships with foreign patent offices and counsel
  • Analysis of potential conflicts
  • Advice with respect to foreign enforcement
  • Education with respect to developments in foreign and international IP law and practice
He also serves as an advisor and expert witness on PCT, NAFTA and WTO matters, in particular on behalf of major pharmaceutical manufacturers, and as a consultant to foreign governments on WTO TRIPS compliance issues. Most recently, Jay served as an expert witness in the UNCITRAL/ICSID arbitration Eli Lilly and Company v. The Government of Canada.
 
Jay’s practical expertise is coupled with a rich academic background. He is professor emeritus at Mitchell Hamline School of Law, teaching courses on comparative and international patent law, and the founding director of the school’s IP law clinic—one of the first clinics invited to participate in the USPTO’s Law School Clinical Certification Program.  He has also been invited as a visiting professor at law faculties in China, Cyprus, India, Lithuania, Nigeria, and Sri Lanka.

Accolades

  • 2014 Minnesota Lawyer Attorney of the Year
  • Fulbright Senior Scholar in Cyprus and Sri Lanka
  • Fulbright Alumni Initiatives Award
  • Indo-American Fellow in Bangalore and New Delhi
  • University of St. Thomas Distinguished Educator Award

Other

  • AIA Pro Bono Advisory Council
  • EPO-US Bar Liaison Council member
  • Bangladesh Copyright and IP Forum (BCIPF) Trustee
  • Former special advisor to the expert committee of the China Trademark Association
  • Intellectual Property Owners Association, Patent Law and Practice (International) Committee
  • Former U.S. State Department speaker and academic specialist, and legal consultant to the U.S. Agency for International Development and the Asia Foundation
  • Extensive legal experience in Europe, Asia and the Middle East
  • LegalCORP Inventor Assistance Commitee member

Languages

French (fluent), Spanish (reading knowledge)

Education

 

Cornell University Law School, JD, 1974

Cornell University, BS, Industrial and Labor Relations, 1971

Admissions

Supreme Court of Pennsylvania
Supreme Court of Minnesota
U.S. Court of Appeals for the Federal Circuit

Memberships

American Bar Association IP Law Section – Liaison to WIPO Standing Committee on Patents; Books Editorial Board Member
American Intellectual Property Law Association – Co-Chair of International and Foreign Law Committee, formerly Chair of Committee on Pro Bono Practice and PCT Issues Committee
Union Internationale des Avocats
International Association for the Protection of Intellectual Property
Minnesota Intellectual Property Law Association
International Trademark Association

Publications

Selection of Recent Presentations

  • “Intellectual Property: Who Profits from Traditional Knowledge?” Fulbright Association Annual Meeting, George Washington University School of Law, November 2016
  • “Pro Bono: The Why and the How,” AIPLA Spring Meeting, Moderator, May 2016
  • “Current State of US Patentable Subject Matter and the Trans Pacific Partnership’s Potential Impact on Pharmaceutical and Biotech IP,” Global IP Convention, New Delhi, India, January 2016
  • “Ethical Representation of Every Client: Paying or Pro Bono ” AIPLA Webinar, December 2015
  • “Gene and Biotechnology Patenting: An International and Comparative View,” Union Internationale des Avocats, May 2015
  • “Protecting Intellectual Property Outside the US,” Intellectual Property Essentials for the Non-IP Attorney, Minnesota Continuing Legal Education, April 2015
  • “Enforcement and Patentable Subject Matter: The US Dilemma,” 2015 Global Intellectual Property Convention, Mumbai, India, January 2015
  • “Taking Advantage of the PCT: Strategies, Tips and Best Practices,” World IP Forum, New Delhi, India January 2015
  • “Collaborative Approaches to Global Patenting,” 2014 Design of Medical Devices Conference, University of Minnesota, April 2014
  • “Patent Law Pro Bono: How and Why,” ABA-IPL and ABA Center for Professional Responsibility webinar, August 2013
  • Faculty and Chair, “AIPLA PCT Annual Seminar,” Washington, DC, July 2011 – 2013
  • “The Quest for a Global Patent: How Close Are We Getting?” 2013 Design of Medical Devices Conference, University of Minnesota, April 2013
  • “US Perceptions of Pharmaceutical Patenting in India,” ITAG Global Intellectual Property Conference, Bangalore, India, January 2013
  • “America Invents Act Pro Bono Program for Inventors and Small Businesses,” PLI webinar, January 2013
  • “America Invents Act and Patent Law Updates,” Korean Intellectual Property Office, Daejeon, Korea, October 2012
  • “New Developments in International IP: Three Hot Topics in 2012,” Midwest IP Institute, September 2012
  • “Promises and Predictions: A Paradigm Shift for Patentable Utility?” ABA Annual Meeting, Chicago, August 2012
  • “International Patent Law and PCT Developments,” 2012 Minnesota State Bar Association International Business Law Institute, Minneapolis, May 2012
  • “Treaty Obligations Pertaining to Patentable Utility,” IPIC Comparative Intellectual Property Law Symposium, Ottawa, Canada, April 2012
  • “The Madrid Protocol: Success, Failure or Somewhere in Between,” Midwest Intellectual Property Law Symposium, Minneapolis, September 2011
  • “Comparative and International Software Patent Update,” AIPLA Computer and Electronic Patent Law Summit, St. Paul, Minn., July 2011
  • ” Defending Trademark Rights: An International Perspective,” China Trademark Association Annual Meeting, September 2010
  • “Think Globally,” Minnesota Inventors Congress, Red Wing, Minn. June 2010
  • “IP in China,” Honeywell in-house training, May 2010
  • “International Patent Law Update,” William Mitchell College of Law, April 2010
  • “Advanced PCT Practice,” Cargill in-house training, February 2010
  • Welcome Keynote and “Developments in US Patent Law,” China Trademark Association Annual Meeting, Qingdao, China, November 2009
  • “Updates and Strategies for PCT Searching and Searching Authorities,” AIPLA Live Online Seminar, August 2009
  • “The Future of International Patent Protection,” Lexis Nexis Twin Cities IP Summit, May 2009
  • “Prosecuting for Enforcement Success in Europe, China, Japan and Australia,” AIPLA Annual IP Law Conference, April 2009
  • “PCT Update,” 3M in-house training, April 2009
  • “PCT Practice,” Dupont Patent Academy webinar, February 2009
  • “Protecting Intellectual Property Rights in China,” with Amy Xu, MN-CLE, December 10, 2008
  • “The Changing Landscape of Patent Law: Recent Developments in India,” AIPLA Spring Meeting, May 14, 2008
  • “International Patent Law Update,” MIPLA and the MSBA Business Law Section – January 28, 2008
  • “Update on International Trademark Strategy: Keys to Protecting Brands Overseas,” China Trademark Association – November 2007
  • “PCT Rule Changes, “NAPP Annual Meeting, Alexandria, VA – July 2006
  • Keynote, William Mitchell College of Law PCT Symposium 2006, St. Paul, MN – February 2006
  • High Technology Cooperation Group (HTCG) Dialogus on Nanotechnology, Defense Technology and Biotechnology – November 2005
  • “The International Patent System: WIPO Comes to UCLA,” UCLA Law School Symposium, Los Angeles, CA – September 2005
  • “Enhancing Global Competitiveness of the Indian Life Sciences Industry through the Strategic Use of the Patent System,” WIPO National Seminars (New Delhi, Mumbai) – December 2005
  • AIPLA 2005 Advanced PCT (Washington, D.C., Minneapolis, Sand Diego) – July 2005
  • “PCT Practice: Update, “Intellectual Property Institue of Canada 39th Spring Meeting – April 2005
  • “A Discussion of Recent Changes to PCT Practice and the Politics That Prompted Them,” Connecticut IP Law Association – October 2004
  • “The PCT: Recent Developments,” WIPO-WTO Colloquium for Teachers of Intellectual Property Law, Geneva – June 2004
  • “PCT Today: History, Status and Projected Growth,” FIPLA/AIPLA Colloquium on Reform of the Patent Cooperation Treaty, Nice, France – April 2003
 
Jay Erstling Of Counsel Minneapolis

Jay A. Erstling

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612.349.5771erstling@ptslaw.com