|PATENT REFORM NEWS!|
|USPTO Examiners Visit CVRx|
|Pedersen Recieves MIPLA President's Award|
|Salmela 40 Under Forty Honoree|
|Firm Welcomes Lori Frank|
|Patterson Thuente IP Names New Partners|
|Pedersen Named Top Patent Prosecutor|
|Firm Welcomes Chief Judge Rader|
|Favorable Verdict for Immunosciences|
|Pioneering Pro Bono Patents|
|Patterson Thuente a Go-To Law Firm|
|Biasco and Salmela Named Partners|
|Girtz Joins Patterson Thuente IP|
|Supreme Court Decides on Bilski|
|USPTO Director Visits Minnesota|
|Firm Names New Partners|
|Firm Welcomes Associate Attorney|
|USPTO Rescinds Controversial Patent Rules|
|Facebook Change Could Cause TM Infringement|
|Amy Salmela Joins Firm|
|Aaron Davis Named Partner|
|Delegates From Chinese Supreme Court Visit MN|
|Attorney John Fonder Visiting Professor in Beijing|
|Erstling Speaks to China Trademark Association|
|Jay Erstling Joins Firm's International Practice|
Special Event for Intellectual Property Law Students
Patterson Thuente IP is offering future IP attorneys the chance to hone their interview skills and resumes. Join us for a casual dinner and some friendly advice!
The event is Wednesday, April 17, 2013. Details here...
Brad Pederson Named a 2012 Attorney of the Year
Brad Pedersen was named a 2012 Attorney of the Year by Minnesota Lawyer. Honorees are chosen based on their leadership in the profession, involvement in major cases, excellence in corporate or transactional services, and service the the Minnesota judicial system.
Brad was recognized for taking a proactive approach to understanding, shaping and putting into practice the Leahy-Smith America Invents Act. Brad has been a key commentator on the new law, working with IP associations, Congress and the USPTO to provide input as the law and rules were being developed. Now, he is on the speaking circuit, helping others understand the new law and how to practically apply it to patent practice.
Patterson Thuente IP Named a 2013 Go-To Law Firm
Patterson Thuente IP has been recognized as one of the 2013 Go-To Law Firms at the Top 500 Companies, placing the firm in an exclusive group of law firms that deliver exceptional work for Fortune 500 companies.
The firm was selected by our client, Alliant Techsystems, a global provider of highly engineered materials and products for the defense, aerospace and security industries.
The 2013 Go-To Law Firms list is published by American Lawyer Media, after extensive research that includes surveying general counsel at Fortune 500 companies. Patterson Thuente IP has been recognized for the past five years.
Seven Patterson Attorneys Recognized by Super Lawyers
Super Lawyers acknowledged the accomplishments of six Patterson Thuente IP attorneys this year. Jim Patterson, and Brad Pedersen were recognized on the 2012 Minnesota Super Lawyers list. Aaron Davis, Kyle Peterson, Amy Salmela and Brian Stender were selected for inclusion on the 2012 Minnesota Rising Stars list.
Salmela Named Up & Coming Attorney
Amy Salmela, a partner in the firm's patent prosecution practice, has been recognized as an Up & Coming Attorney by Minnesota Lawyer. The Up & Coming Attorney recognition highlights attorneys within their first 10 years of practice who have already distinguished themselves by achievement in the profession and leadership in the community. Congratulations to Amy! [Read more...]
USPTO Examiners Visit MN Medical Technology Companies
Patent examiners from the USPTO visited Minnesota companies recently as part of an educational field trip. Our client, Brooklyn Park medical device company, CVRx, was among their stops. Meeting with key technical personnel and the company’s patent counsel, the examiners toured CVRx’s fabrication shops, learned about R&D efforts and manufacturing processes, and discussed FDA hurdles and other legal obstacles that emerging medical device companies face.
“It is admirable that the Patent Office is working to educate its examiners about how innovation occurs at companies like CVRx, and more broadly about the technical, regulatory and commercial issues we face as we endeavor to bring needed medical advances to patients,” said Rob Kieval, founder and Chief Technology Officer at CVRx.
CVRx also gained from the visit deeper insight into USPTO practices. “We believe the visit was mutually beneficial,” said Erika Roberts, intellectual property manager with CVRx. “Ultimately, it’s initiatives like this that speed up patent prosecution and improve patent quality.”
Brad Pedersen Honored with MIPLA 2012 President's Award
Patterson Thuente IP partner Brad Pedersen was honored with the 2012 President's Award by the Minnesota Intellectual Property Law Association (MIPLA). Brad led MIPLA's efforts to provide the USPTO with meaningful comments and suggestions regarding rules and regulations for implementing the American Invents Act.
Amy Salmela 40 Under Forty Honoree
Patterson Thuente IP is proud to announce that Amy Salmela was honored as part of the Minneapolis/St. Paul Business Journal's 40 Under Forty Awards. She was selected among more than 350 honorees for her professional achievements and community services. Read the article and watch a fun behind the scenes video from the photo shoot.
Patterson Thuente IP Welcomes Lori Frank
Lori Frank, has joined the firm as an associate attorney. Her practice focuses on patent prosecution in the technology areas of computers, electronics, mechanical, optics, semiconductors, and telecommunications.
Patterson Thuente IP Names New Partners
The firm is pleased to announce that Dr. Paul Onderick and Brian L. Stender have been named partners. Dr. Onderick is a patent attorney and licensed optometrist who assists companies in securing protection and developing and managing patent portfolios. Mr. Stender's practice combines patent prosecution and intellectual property litigation.
Patterson Thuente IP Opens South Dakota Office
Patterson Thuente IP has expanding into South Dakota, becoming the newest partner in the South Dakota State University (SDSU) Innovation Campus. The campus is located in Brookings, SD on the SDSU campus. The firm has an office in a newly constructed second wing of the campus and will be available to provide legal services to campus tenants and other businesses in the community, as well as education with respect to protecting their innovations.
South Dakota is outpacing much of the nation in the funding of R&D efforts, and academic institutions in the state are getting attention from groups like the National Science Foundation, the National Institutes of Health and Sanford Health, in the form of hundreds of millions in research grants. In contrast, there are only 15 registered patent attorneys in the state, meaning companies and academic institutions have only a handful of local options for intellectual property counsel.
“There are some exciting things happening in the way of innovation and support of technology-based industry in South Dakota,” said Patterson Thuente IP managing partner Jim Patterson. “We saw an opportunity to expand our presence in the Upper Midwest and to offer companies in the area a full-service IP option right in their backyard.”
The new office will also improve the firm’s ability to serve its current clients in South Dakota and Western Minnesota.
The SDSU Innovation Campus, originally completed in 2008, currently houses 20 startup, early-stage, and well-established companies. The expansion will enable further growth of entrepreneurial activity with the addition of 18,000 square feet to accommodate new tenants. An additional 190 research and small business jobs are expected to be created, according to grantee estimates.
Trademark Dispute Over the Name 'Sturgis'
Patterson Thuente IP and our client Rushmore Photo & Gifts (Rushmore) are taking on a fight over the name of a South Dakota town and home to one of the country's largest and most well-known motorcycle rallies--Sturgis. Rushmore designs and distributes Sturgis souvenirs and has since 1987. The company was sued by Sturgis Motorcycle Rally, Inc. (SMRi) on June 23, 2011 for infringement of its alleged trademarks, which include the word "Sturgis." In response, Rushmore filed counterclaims in federal court seeking the cancellation of SMRi's registration for the name "Sturgis," based on fraud on the United States Patent & Trademark Office. Rushmore is also seeking damages for tortious interference and use of a fraudulently obtained trademark registration.
Trademark opponents call for boycott of Sturgis merchandise, Rapid City Journal (Rapid City, SD), July 26, 2011
Claim to trademark could kill Sturgis rally, Rapid City Journal, July 19, 2011
The 'Sturgis' Name is SD Court Battle, West Centeral Tribune (Willmar, MN), July 11, 2011
Vendors say Sturgis trademark hurts business, Rapid City Journal (Rapid City, SD), July 9, 2011
Sturgis Trademark, KATORadio (Rapid City, SD), July 8, 2011
Lawsuit and Counter Lawsuit About Sturgis Rally Trademark Use (Part I), Cyril Huze Blog, July 8, 2011
'Sturgis' name subject of court battle in SD, KELOLAND-TV (Sioux Falls, SD), July 8, 2011
What's in a name? SD nonprofit group, souvenir business in court battle over Sturgis trademark, Associated Press, July 8, 2011
Sturgis group counter sues for trademark infringement, KOTA (ABC - Rapid City, SD), July 7, 2011
Group questions legality of "Sturgis" trademark, KEVN (FOX - Rapid City, SD), July 7, 2011
Sturgis Trademark Holder Sues Gift Shop, Dealer News, July 7, 2011
Super Lawyers Recognizes Patterson Thuente IP Attorneys
Patterson Thuente IP is honored to announce that Jim Patterson and Brad Pedersen were selected for inclusion in 2011 Minnesota Super Lawyers and Kyle Peterson was in the 2011 edition of Minnesota Rising Stars. Super Lawyers' selection process is designed to identify attorneys who have attained a high degree of peer recognition and personal achievement. Only five percent of lawyers in Minnesota are recognized by Super Lawyers.
Brad Pedersen Selected as a Top Patent Prosecutor
Patterson Thuente IP partner Brad Pedersen has been selected as one of the inaugural Patent Buddy Top Patent Prosecutors. Patent Buddy, in cooperation with Patent Research Review selected honorees based on a number of factors, including the number and quality of nominations the attorney/agent received from his or her peers, the high degree of accomplishment obtained in patent prosecution and other achievements. Of the approximately 30,000 registered patent attorneys, less than 2 percent were selected as Top Patent Prosecutors.
For more information on the selection process can be found on the Patent Buddy website.
Chief Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit spoke to members of the Minnesota IP bar at the 2nd Annual Patterson Thuente IP Lecture at William Mitchell College of Law on Thursday, April 21. The Chief Judge spoke about ediscovery as a key hinderance in patent litigation. He called on audience members to embrace the idea of limiting the number of record custodians that could be discovered or placing a limit on the number of search terms in order to rein in the ediscovery process in patent cases.
The Chief Judge also spoke about the importance of being competitive in the international marketplace by supporting our country's advantages in innovation and research.
Immunosciences Lab, Inc. (ISL) and respected immunologist, Dr. Aristo Vojdani, recently won a year long fight with former business partner, Neuroscience, Inc./Pharmasan Labs, Inc., over confidential testing methods. A federal jury awarded ISL $1.18M in damages, finding that Neuroscience was in breach of two of the parties' contracts.
Dr. Vojdani expressed his gratitude for the verdict. "With the jury's decision we feel vindicated and I feel like a huge mass of pain has been removed from my heart."
The companies had a business relationship in which Neuroscience paid for the use of ISL's proprietary methods for conducting immunological testing on blood and other body fluids. A confidentiality agreement between the companies precluded use of the tests once the business relationship was over. Nevertheless, Neuroscience continued to use three of ISL's confidential testing methods after the relationship was severed.
"With the help of the wonderful legal team at Patterson Thuente, we finally had the opportunity to lay our case before the judge and jury," said Vojdani. "Fortunately, we had eight wise individuals on our jury who deliberated carefully and saw the truth."
Patterson Thuente IP and other members of the Twin Cities legal community have launched a pilot program to provide pro bono legal services to low-income inventors. Visit the website of partner agency, LegalCORPS for more information.
For the fourth consecutive year, Patterson Thuente IP was selected by our clients as a nationally ranked Go-To Law Firm® for intellectual property.
Corporate Counsel magazine conducts a survey of Fortune 500 companies, asking which law firms they rely on in various practice areas. Research is also conducted, using various resources including public records, leading publications and well-respected commercial databases, including those published by the USPTO and WIPO.
The 2011 Go-To Law Firms are listed in Corporate Counsel’s 2011 In-House Law Departments at the Top 500 Companies directory. The guide is distributed to more than 20,000 general counsel across the country and available online at www.corpcounsel.com/guide.
Tye Biasco and Amy Salmela were named partners of the firm, effective January 1, 2011. Tye has been with the firm since 2003. His practice is multi-faceted, encompassing patent prosecution, trademark and litigation. Amy works primarily with companies in the semiconductor, computer hardware and software, electrical and electronics, physics and mechanical arts.
The firm welcomes patent attorney Christian Girtz. Girtz has worked with the firm as a law clerk since 2009. He has a rich technical background that includes developing advanced software for a Minnesota-based Fortune 100 conglomerate.
On June 28, 2010, the United States Supreme Court handed down a much anticipated decision relating to business method patents in the case of Bilski v. Kappos. The Court affirmed the decision of the Court of Appeals for the Federal Circuit, rejecting Bilski's claims as non-statutory.
The Bilski case involves a patent application with claims to a purely mental business method of hedging commodity prices. The application was initially rejected by the USPTO as being outside the scope of subject matter that can be protected by a patent, under the limits of patentable subject matter defined by the Patent Statute and prior Supreme Court cases. The Federal Circuit affirmed the USPTO’s rejection. The Supreme Court then took the case in order to review the legal test used by the Federal Circuit in deciding whether the claims in the Bilski application were directed to proper patentable subject matter, determine whether the test was the correct test, and if so, decide whether Bilski’s claims passed or failed that test.
While the Supreme Court was unanimous in rejecting Bilski's claims as failing to define patentable subject matter, the Justices split 5-4 on the path to that result. The majority of the Court found Bilski's claims were directed to an abstract idea and therefore ineligible for patent protection as a statuatory process. The Court stated that, while the machine-or-transformation test is a useful and important clue to patentability, it should not be the exclusive test. Four members of the Court, led by retiring Justice Stevens, would have excluded business method patents entirely from patent eligibility.
In the end, the decision in Bilski countinues the current state of uncertainty regarding the proper conditions under which abstract ideas can be legally patented. By resorting to the old adage that you can't patent abstract ideas, the Supreme Court resolved this case, but left very little guidance for future cases. For now, it means that existing and future patent claims that touch on abstract ideas and laws of nature will continue to be decided on a case-by-case basis.
If you have questions or concerns about the Bilski decision, contact Brad Pedersen.
USPTO Director David Kappos Meets With Minnesota IP Community
Patterson Thuente, along with William Mitchell College of Law, was fortunate to host David Kappos, Undersecretary of Commerce for Intellectual Property and Director of the United States Patent & Trademark Office for an inventors luncheon and public lecture on April 6, 2010. Kappos shared his vision for the future of the USPTO to a crowd of more than 200. Earlier in the day, he solicited ideas from inventors and business leaders at an exclusive inventors luncheon hosted by Patterson Thuente.
Patterson Thuente Names New Partners
Patterson Thuente named J. Paul Haun and Kyle T. Peterson partners effective January 1, 2010. Haun has been a patent attorney with the firm since 2002 and works with clients in the areas of healthcare, fluid components and processing systems. Peterson represents significant brand owners in the management of their global trademark portfolios and the selection, clearance and registration of new brands.
Patterson Thuente Welcomes New Associate Attorney
Patterson Thuente welcomes patent attorney Justin Woo to the firm. Justin’s technical background is in chemistry and chemical engineering. As an associate at Patterson Thuente, he focuses on prosecuting patents in the areas of biotech, biochemistry and polymer chemistry, as well as in medical device, mechanical arts, and materials-related technologies.
USPTO Rescinds Controversial Patent Rules
The saga of the United States Patent & Trademark Office’s controversial rule changes have come to a close. On October 8, 2009 the Patent Office announced that it is rescinding the proposed rule changes and will file a motion to dismiss and vacate the federal district court decision in the related lawsuit, Tafas v. Kappos. For more inforamation on the US Patent Reform movement, see our Patent Reform News section.
Facebook Change Could Cause Trademark Infringement
On June 13th, social networking site Facebook began allowing users to create personalized URLs for their profile pages (facebook.com/yourname). In an effort to address trademark infringement issues, Facebook proactively restricted some well-known company and product names, and provided an online form for trademark owners to register their marks and have them blocked. Trademark owners had four days to register their marks with Facebook and could do so for free.
More recently, Facebook sent out communications to trademark owners who took advantage of the advance reservation process, inviting them to now sign up for usernames that include their registered trademark.
As of June 28, 2009 Facebook users with pages registered after May 31, 2009 and new page holders have been able to register usernames. However, Facebook states that it cannot guarantee the username request will be granted in the event that multiple users have claimed rights to the same mark.
If you are a trademark owner and have reserved your brand name, the username may be requested so that you can take advantage of the personalized URL. If you are not interested in requesting the username of a reserved brand name, you can still reserve the trade mark(s) and have it taken out of the pool of possible usernames. Facebook, however, notes that if a username is not requested for a reserved trademark, it may be possible for another entity to request that username in the future if they also claim rights. If reservation was missed, trademark owners can still object to a conflicting username by engaging Facebook's complaints process. The form to do so can be accessed here: Username Infrigement Form
Amy Salmela Rejoins Firm
After a two year stint in-house at Infineon in Munich, Germany, former Patterson attorney, Amy Salmela has rejoined the firm. Amy's experience will assist her as she develops global IP strategies for the firm's clients. Her practice focuses on patent prosecution for clients int he semi-conductor, computer hardware, software and electronics industries. Learn more about Amy
Aaron Davis Named Partner
Patterson Thuente has named Aaron W. Davis as partner. Davis is a member of the firm’s growing litigation department and also leads its arts and entertainment practice.
A skilled litigator with important trial successes, Davis is recognized among his peers for his skills in the courtroom. Davis’ practice focuses primarily on litigation of intellectual property disputes. He has assisted clients with disputes regarding patents, copyrights, trademarks, trade secrets, trade dress, entertainment contracts, rights of publicity, and other business torts.
Delegates From Chinese Supreme Court Visit Minnesota
December 20, 2007
Six delegates from the Chinese Supreme Court were recently in Minnesota and made Patterson Thuente's offices among their stops. The group met with our attorneys to learn about the operation of an American law firm.
Attorney John Fonder Visiting Professor in Beijing
December 10, 2007
Patterson Thuente attorney John Fonder was invited by China University of Political Science and Law to teach several classes to law students in December. The university is considered one of the top law schools in China and is the largest legal education institute in the world.
Erstling Special Guest at China Trademark Association Meeting
November 2, 2007
Jay Erstling was a keynote speaker at the China Trademark Association Annual Meeting 2007. He delivered a speech on international trademark law. Erstling serves as a special advisor to the expert committee of the China Trademark Association.
International Business Attorney, Jay Erstling, Helping Clients Think Globally
International business attorney and William Mitchell College of Law professor
Jay Erstling recently joined Patterson Thuente as of counsel. As someone who has helped shape international patent law policy through his work as director of the Patent Cooperation Treaty (PCT) and advisor to the director general of the World Intellectual Property Organization (WIPO), Erstling brings a dynamic presence and global perspective to the array of services the firm offers its clients. He will advise clients on the many changes in international patent law and assist with their patent strategy.
Erstling began his career with WIPO, an agency of the United Nation that promotes IP protection throughout the world and is working to develop a balanced and accessible international IP system. Erstling served as a WIPO staff lawyer from 1976 to 1986 and it was in this position that he developed his interest in international patent law. Throughout his career, Erstling has served as counsel on international issues and taught at several universities. Prior to his directorship at PCT (treaty that allows inventors to preserve the right of their inventions in 135 countries around the world) he represented the American Intellectual Property Law Association at PCT meetings.
"I think I have worked with patent offices and patent practitioners in more countries (and countries at all levels of development) than the majority of people in this profession," remarked Erstling. "That gives me a great appreciation for the differences, as well as the similarities, that make up the international patent system today."