Ideas. Owned.®
Jay A. Erstling

Special Counsel

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.

Professional Experience
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, Paris Convention, 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 for litigation and other disputes related to PCT, Paris Convention, and other issues involving international law and treaties before US Federal and State Courts, foreign tribunals, the EPO and the International Center for the Settlement of Investment Disputes (ICSID).  Most recently, Jay served as an expert in the UNCITRAL/ICSID arbitration Eli Lilly and Company v. The Government of Canada and in the CRISPR/Cas9 opposition in the European Patent Office.
 
Jay has extensive legal experience in Europe, Asia and the Middle East. Some of his international designations include:

  • EPO-US Bar Liaison Council Member
  • Bangladesh Copyright and IP Forum (BCIPF) Trustee
  • Special Advisor to the Expert Committee of the China Trademark Association (former)

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. Formerly, Jay was a U.S. State Department speaker and academic specialist, and legal consultant to the U.S. Agency for International Development and the Asia Foundation.

Practice Areas

  • IP Portfolio Management
  • Licensing
  • International IP Protection

Education

  • Cornell Law School, Ithaca, New York
    • J.D. - 1974
  • Cornell University
    • B.S. - 1971
    • Major: Industrial and Labor Relations

Accolades

  • IAM Strategy 300 – Top IP Strategists
  • Minnesota Lawyer Attorney of the Year, 2014
  • Fellow, American Intellectual Property Law Association
  • 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
  • Fulbright Scholar
  • Fulbright Scholar
  • Selected as one of the Leading 300 IP Strategists Worldwide by IAM Magazine

Presentations

  • Priority under the Paris Convention” Are National/Regional “Sonderwegge” Acceptable? – The CRISPR/Cas9 Case, Rhineland Biopatent Forum, June 2018, 1986 to 2000
  • Making Intelligent PCT Choices, AIPLA Webinar, March 2018, 1993 to 1994
  • Harmonization of Trade Secret Laws: The US Law and EU Directive, Global Intellectual Property Convention, Bangalore, January 2018
  • The CRISPR/Cas9 Patent Dispute in the EPO, Global Intellectual Property Convention, Bangalore, January 2018
  • The PCT, Alice, and the Challenge of Protection for Computer Related Inventions, Biocon, Bangalore, January 2018
  • IP in an Ever-Evolving World, keynote address at the Dennemeyer Forum, multiple cities, 2017
  • Biosimilars: A US Perspective, Global Intellectual Property Convention, New Delhi, January 2017
  • “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
  • International Speaker, U.S. State Department
  • Mitchell Hamline School of Law, Professor Emeritus
  • International Business Law, University of St. Thomas, 1986 to 2000
  • Law & Developing Countries, University of Minnesota Law School, 1993 to 1994

Publications

  • Intellectual Property Across Cultures, Ideas on Intellectual Property Law, August/September 2019
  • The US-Mexico-Canada Agreement and Intellectual Property, Ideas on Intellectual Property Law, Year End 2018
  • 2018, A Year of Uncertainty for International IP, January 6, 2018, Star Tribune
  • China and India Take Steps to Make Software Patenting Easier, Ideas on Intellectual Property Law, Year End 2017
  • International Intellectual Property Expert to Visit Dhaka, Dhaka Tribune, September 13, 2017
  • The India Patent System: A Decade in Review, 8 Cybaris, issue 1, 2, 2017
  • IP in an Ever-Evolving World, August/September 2017, Ideas on Intellectual Property Law
  • What U.S. Patent Owners Lost in Trump’s TPP Pullout, CFO Magazine, March 17, 2017
  • The Trans-Pacific Partnership – an opportunity lost?, Star Tribune, March 20, 2017
  • Best of Times and Worst of Times for International IP, October 2016, IP Law360
  • What Brexit Means for U.K., E.U. Intellectual Property Rights, Star Tribune, September 26, 2016
  • Brexit, IP, and the Medical Device Industry, mddionline.com, July 29, 2016
  • Attorney of the Month Jay Erstling: Patently Original, Attorney at Law Magazine, April 2016
  • Patent World Expanding, But Work Sharing Helps, Minnesota Lawyer, December 15, 2015
  • A Framework for Patent Exhaustion from Foreign Sales, XXV Fordham Intellectual Property, Media and Entertainment Law Journal, 499 (2015) (with Frederik Struve)
  • Featured in: Manufacturing Business and the Law: A Guide to the Laws, Regulations, and Careers of the U.S. Manufacturing Revival (ABA Book Publishing), 2015, pp. 343 – 353
  • A New Route to International Design Protection, Ideas on Intellectual Property Law, August/September 2015
  • Upper Midwest Jazzed Up About Expansion of Patent Pro Bono Program, IP Watchdog, May 2, 2015
  • LegalCORPS Provides Pricey Patent Help For Free, Minnesota Business, March 25, 2015
  • White House Recognizes Minneapolis Lawyers’ Pro Bono Program, Twin Cities Business, February 24, 2014
  • Work Sharing is Bringing the Patent World Closer Together, Ideas on Intellectual Property Law, October/November 2013
  • A Different State of Grace: The New Grace Period under the AIA, Landslide, July/August 2013, Vol. 5, No. 6
  • The Practitioner’s Guide to the PCT (ABA Section of Intellectual Property Law), 2013 (with Samson Helfgott and T. David Reed)
  • International Patent Law and Policy (West, American Casebook Series), 2013 (with Ruth Okediji and Margo Bagley)
  • Usefulness Varies by Country: The Utility Requirement in Patent Law in the United States, Canada and Europe,Cybaris®: Vol. 3: Iss. 1, Article 1. INCLUDES VIDEO
  • Patent Law and the Duty of Candor: Rethinking the Limits of Disclosure, 44 Creighton Law Review 329 (2011)
  • IP in Modern Day China: A Look at the Evolving Patent Landscape, Ideas on Intellectual Property Law, June/July 2010
  • Korea’s Patent Policy and Its Impact on Economic Development: A Model for Emerging Countries?,San Diego International Law Journal, Volume 11, No. 2, Spring 2010
  • Transatlantic Patenting, Landslide, November/December 2009
  • PCT Supplementary International Search (SIS), IPO Committee Newsletter, July 2009
  • Using Patents to Protect Traditional Knowledge, 15 Tex Wesleyan L. Rev. 295, Spring 2009
  • El Trato de Cooperacion en Materia de Patentes: en el centro del sistema internacional de patentes,El Derecho, N 12.053, AND XLVI, pg 1 – 2 (co-author: Martin Etcheverry)
  • Harmonisons enfin les brevets (invited op-ed article), Tribune de Genève, September 26, 2007
  • The Patent Cooperation Treaty: At the Center of the International Patent System, William Mitchell Law Review, Vol. 32, No. 4, 2006
  • Managing the Avalanche: New Rules Change Path of Most International Patent Applications,Intellectual Property Today, Vol. 9, No.7, July 2002
  • International Patent Protection Undergoes Reform,Intellectual Property Focus, Winter 2002
  • Managing a Global Patent Portfolio, International Focus, September 2001
  • The US Constitution and the Assertion of Judicial Primacy, City of Boerne v. Flores, Kings College Law Journal(University of London), Vol. 9, 1998-1999
  • International Technical Transfer & Intellectual Property Rights, 34 International Executive 215, 1992
  • The SCPA & Its Impact on this International Protection of Chip Designs, 15 Rutgers Comp & Technical L. J. 303, 1989

Professional Associations

  • Supreme Court of Pennsylvania
  • Minnesota Supreme Court
  • U.S. Court of Appeals Federal Circuit
  • Minnesota
  • Pennsylvania

Bar Admissions

  • Supreme Court of Pennsylvania
  • Minnesota Supreme Court
  • U.S. Court of Appeals Federal Circuit
  • Minnesota
  • Pennsylvania

Community Involvement

  • AIA Pro Bono Advisory Council
  • LegalCORP Inventor Assistance Committee member
  • EPO-US Bar Liaison Council member
  • Special advisor to the expert committee of the China Trademark Association
  • American Intellectual Property Law Association PCT Issues Committee - Chair
  • Extensive legal experience in Europe, Asia and the Middle East

Current Employment Position

  • Special Counsel

Past Positions

  • World Intellectual Property Organization, Senior Legal Officer, 1976 to 1986
  • University of St. Thomas, Professor
  • Office of the Patent Cooperation Treaty (PCT), Director
  • World Intellectual Property Organization (WIPO), Geneva, Switzerland, Director-Advisor
  • EPO-US Bar Liaison Council Member
  • Bangladesh Copyright and IP Forum (BCIPF) Trustee
  • Special Advisor to the Expert Committee of the China Trademark Association (former)

Representative Cases

  • Eli Lilly and Company v. The Government of Canada

Ancillary Businesses

  • Consultant on International Law Reform Projects

Languages

  • French
  • Spanish