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
For the past two years, Jay has been selected as one of the Leading 300 IP Strategists Worldwide by IAM Magazine. He 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. Jay also serves as an expert witness for litigation and other disputes related to PCT, Paris Convention, and other issues involving international law and treaties before US Federal, District, and State Courts, EPO and the International Center for the Settlement of Investment Disputes (ICSID). 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.