Ideas. Owned.®
Brad D. Pedersen

Shareholder – Patent Attorney

Patent Law
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 grant 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. Recently, Brad was recognized by IAM Magazine as one of only 50 recommended attorneys in the country for post grant proceedings. Brad is currently on the Board of Directors of the American Intellectual Property Law Association (AIPLA). He is co-author of the Bloomberg BNA treatise, Patents After the AIA (America Invents Act): Evolving Law and Practice (2016) and its companion guide Prior Art After the AIA: A Practical Guide (2019). He is a named inventor on more than a dozen issued US patents on technologies ranging from medical devices to unmanned aircraft, and has been involved as a founder of three different start-up companies. Brad is also a graduate of the Singularity University Executive program (SE Fall 2010).

Representative Technologies
  • Medical devices
    • Implantable electrotherapy devices
    • Biocompatible materials
    • Orthopedics
    • Catheters
    • Leads
    • Surgical instrumentation
  • Digital health & diagnostics
  • Nanotechnology
  • Atomic force microscopy
  • Imaging for retroreflective surfaces
  • Computers
  • Software
  • Drone technology
  • Remote sensing
  • Precision agriculture
  • Advanced metering infrastructure
  • Robotics

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

Practice Areas

  • Patent Law

Education

  • University of Minnesota Law School, Minneapolis, Minnesota
    • J.D. - 1986
    • Honors: cum laude
  • South Dakota State University
    • B.S. - 1981
    • Honors: Four-Year Briggs Scholarship
    • Major: Electrical Engineering
  • Singularity University
    • Honors: Exponential Technologies Executive Program

Accolades

  • IAM Magazine Patent 1000, 2013 – 2019 (recommended for post grant proceedings)
  • Best Lawyers in America
  • Minnesota Super Lawyers
  • 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
  • Super Lawyers

Presentations

  • “Artificial Intelligence and Its Impact on Society, Law and Lawyers,” MSBA Corporate Counsel Institute, Mitchell Hamline School of Law, March 9, 2018, 2010
  • “Patents After the AIA: The Helsinn Case,” AIPLA Patent Bootcamp, February 9, 2018, 2010
  • “Primer on Patent Rights,” Bloomberg BNA internal, December 6, 2017, 2010
  • “Primer on Patent Rights, Singularity & Infropy,” University of Minnesota ProSeminar, Minneapolis, MN, December 2017, 03/09/2018 to 03/09/2018
  • “IP for Careers and Practice in Medical Tech,” University of Minnesota, Minneapolis, MN, September 2017, 02/09/2018 to 02/09/2018
  • “Patents After the AIA, ” AIPLA 2017 Patent Practice Bootcamp, Various locations, 12/06/2017 to 12/06/2017
  • “The Hunt for Prior Art,” CPA Global Webinar, April 2017, 2017 to 2017
  • “Patents After the AIA: Evolving Law & Practice Under Section 102,” AIPLA 2016 Chemical Practice Boot Camp, Minneapolis, MN, May 2016, 2017 to 2017
  • “Patents After the AIA: Evolving Law & Practice,” AIPLA webinar series, April – May 2016, 2017 to 2017
  • “Patents After the AIA: Evolving Law & Practice,” University of Minnesota Law School, Minneapolis, MN, March 2015, 2017 to 2017
  • “The Bar’s Response to Proposed Rule Changes,” AIPLA/USPTO Road Show Series, August 2015, 2016 to 2016
  • Panel on Administrative Aspects (Non-Hearing) of AIA Trials, AIPLA|USPTO PTAB Bench and Bar Conference, Alexandria, VA, June 2015, 2016 to 2016
  • “Patent Prosecution Under the AIA,” AIPLA Patent Law Boot Camp, April 28, 2015, 2015 to 2015
  • “UAVs and IP Law,” Robotics Alley Conference, September 2014, Minneapolis, MN, 2015 to 2015
  • “IP for Medical Tech,” University of Minnesota, Minneapolis, MN, September 2014, 2015 to 2015
  • PTAB AIA Trial Roundtable, May 2014, Detroit, MI, 04/28/2015 to 04/28/2015
  • “AIA Patent Etiquette for Effective Filing Dates and Other AIA Best Practices,” 9th Annual Advanced Patent Law Institute, January 2014, Alexandria, VA, 2014 to 2014
  • “First-Inventor-to-File: Problems, Ambiguities and Practical Solutions,” 9th Annual Advanced Patent Law Institute, January 2014, Alexandria, VA, 2014 to 2014
  • “Automated Snapshot Capture,” USPTO Software Partnership Meeting, December 2013, Alexandria, VA, 2014 to 2014
  • “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, 2014 to 2014
  • “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, 2014 to 2014
  • “First-to-File: Final Rules and Guidance – Navigating Significant Changes to Derivation Practice, What Constitutes Prior Art and More,” Strafford webinar, March 2013, 2013 to 2013
  • “The America Invents Act: What You Need to Know,” National CLE Conference, Snowmass, CO, January 2013, 2013 to 2013
  • “The America Invents Act (AIA),” University of Minnesota Patent Law Class, Minneapolis, MN, November 2012, 2013 to 2013
  • “First-Inventor-to-File (FITF) and Other AIA Prosecution Changes: What’s Your Strategy?” Midwest IP Institute, Minneapolis, MN, September 2012, 2013 to 2013
  • “AIA First Inventor to File: Proposed Rules and Guidelines,” USPTO Roundtable, September 6, 2012, 2013 to 2013
  • “The America Invents Act (AIA),” National Institutes of Health, Besthesda, MD, June 2012, 2012 to 2012
  • “2012 and Beyond: Future Technology,” moderator, Minnesota High Tech Association (MHTA) Annual Conference, Minneapolis, MN, April 2012, 2012 to 2012
  • “Intellectual Property in the Medical Device Industry,” University of Minnesota, Minneapolis, MN, April 2012, 09/06/2012 to 09/06/2012
  • “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, 2012 to 2012
  • “Patent Reform: First to File Provisions,” Strafford webinar, November 2011, 2012 to 2012
  • “The New Patent Law – More Complicated than 3D Chess?” University of Minnesota SIPLA Program, Minneapolis, MN, November 2011, 2012 to 2012
  • “The America Invents Act (AIA) Key Issues for Foreign Practice and International Law,” William Mitchell College of Law, St. Paul, MN, November 2011, 2012 to 2012
  • “Overview of the New Patent Law,” Minnesota CLE, October 2011 (conference chair), 2011 to 2011
  • “The New Patent Law – More Complicated than 3D Chess?” Minnesota State Bar Association CLE, Minneapolis, MN, October 2011, 2011 to 2011
  • “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, 2011 to 2011
  • “America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice,” Practicing Law Institute, September 2011, 2011 to 2011
  • “Patent Reform Update: What it Means for Practicing Patent Lawyers,” 2011 Midwest IP Institute, Minnesota CLE, September 2011, 2011 to 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, 2011 to 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, 2011 to 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, 2011 to 2011
  • Participant in USPTO-Patent Public Advisory Committee Quality Task Force public roundtable on Enhancement of Quality in Patents, Los Angeles, CA, May 2010, 2011 to 2011
  • “Inter Partes Reexam,” Board of Patent Appeals and Interferences Annual Board Conference, Washington DC, April 2010, 2011 to 2011
  • “Patent Law Reform Update: What it May Mean for the Average Practitioner,” MN-CLE, March 2010, 2010 to 2010
  • “The Changing Role of Patent Strategy,” LifeScience Alley R&D SIG, September 2009, 2010 to 2010
  • “Open Source: What Your CEO Needs to Know,” Minnesota Information Professional Society 13th Annual Education Seminar, St. Paul, MN – April 2008, 2010 to 2010
  • “The Changing Landscape of Patent Law,” University of Minnesota Design of Medical Devices Conference, Minneapolis, MN – April 2008, 2010 to 2010
  • “The New PTO Rules,” (co-presented with Deputy for Patent Examination Policay, John Love), Midwest IP Institute (Midwest CLE), Minneapolis, MN – September 2007, 2009 to 2009

Publications

  • Prior Art After the AIA: A Practical Guide, co-author with Alan J. Kasper, Ann M. Mueting, Gregory D. Allen, and Brian R. Stanton, Bloomberg BNA, 2019
  • The Supreme Court and IPRs – A Mixed and Messy Bag of Results, PatentlyO.com, April 26, 2018
  • SAS: When the Patent Office Institutes IPR it Must Decide Patentability of All Challenged Claims, IPWatchdog.com, April 25, 2018
  • Patent Losers Piggyback on Supreme Court Constitutionality Review, Bloomberg BNA, August 3, 2017
  • Patents After the AIA: Evolving Law & Practice, co-author with Alan J. Kasper, Ann M. Mueting, Gregory D. Allen, and Brian R. Stanton, Bloomberg BNA, 2016
  • Fed. Circ. Vacates Re-Exam Ruling After Patent Expires, Law360, January 14, 2016
  • Foreword, Cybaris® an Intellectual Property Law Review, Vol. 6, Issue 2, 2015
  • Patent and IP Wishes for 2015, IP Watchdog, January 4, 2015
  • AIPLA Response to the “Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board,” principal committee author, October 2014
  • Patent Litigation: Too Much as Compared to What?, IP Watchdog, July 8, 2013
  • Big Changes for Patent Law: An Update on the America Invents Act, Minnesota Lawyer, March 10, 2013
  • Statutory Construction and Policy Arguments for a Symmetric Approach to Promulgating Guidelines for New Section 102(b) Subparagraphs (A) and (B) – the First-to-Publish Grace Period Exceptions to Prior Art, Cybaris: An Intellectual Property Law Review, Vol. 4, Issue 1, Spring 2013
  • Statutory Construction and Policy Arguments for a Symmetric Approach to Promulgating Guidelines for New Section 102 (B) Subparagraphs (A) and (B) – The First-to-Publish Grace Period Exceptions to Prior Art(co-authored by Christian J. Hansen), SSRN, October 1, 2012
  • Patent Litigation Under First-Inventor-to-File: How Long Will We Wander in a Wilderness? ABA Business Law Today, September 2012
  • On the Road to Patent Harmonization: An Overview on the AIA and Its Impact on Patent Applicants, Owners & Practitioners, MN-CLE IP Book, August 2012
  • Updates and Insights on the New “Post-Issuance” Proceedings: The Latest on the Rules and Implementation Issues for the Post-Issuance Review and Derivation Proceedings, paper for AIPLA Spring Meeting, May 2012
  • Fringe Effects: Strategic Considerations and Counsel for the Parallel Universes of Patent Litigation, Reexaminations and Interferences, paper for ABA 26th Annual Intellectual Property Conference, April 2011
  • Amicus brief on behalf of the firm in Therasense v. Beckton Dickinson, July 2010
  • The Matrix for Changing First-to-Invent: An Experimental Investigation into Proposed Changes to U.S. Patent Law, Cybaris An Intellectual Property Law Review, Vol. 1, May 2010
  • Suggestions for Improving the Rules for Inter Partes Reexaminations: Another Look, paper for BPAI First Annual Board Conference, April 2010
  • The Matrix for First-Inventor-to-File: An Experimental Investigation into Proposed Changes to U.S. Patent Law, Social Science Research Network, December 2009
  • Polishing a Diamond in the Rough: Suggestions for Improving Inter Partes Reexaminations, Journal of the Patent & Trademark Office Society, June 2009, Vol. 91, No 6, pp. 422-27
  • Patent Pending, MinnesotaBusiness, January 2008
  • Novel Idea: Know How, When to Protect Intellectual Property, Upsize Minnesota, March 2007
  • The Rush to a First-to-File Patent System in the United States: Is a Globally Standardized Patent Reward System Really Beneficial to Patent Quality and Administrative Efficiency?, Minnesota Journal of Law & Tech, May 2006

Professional Associations

  • U.S. Court of Appeals Federal Circuit
  • California
  • U.S. District Court District of Minnesota
  • Minnesota Supreme Court
  • Supreme Court of California
  • U.S. Patent and Trademark Office
  • Minnesota

Bar Admissions

  • U.S. Court of Appeals Federal Circuit
  • California
  • U.S. District Court District of Minnesota
  • Minnesota Supreme Court
  • Supreme Court of California
  • U.S. Patent and Trademark Office
  • Minnesota

Community Involvement

  • Institute for Electrical & Electronics Engineering
  • Thomson Reuters, Ideas On Intellectual Property Law, National Editorial Board Member

Current Employment Position

  • Shareholder - Patent Attorney

Past Positions

  • Angeion Corporation, In-House Counsel
  • Brad Spent Several Years in the Computer Industry
  • Intellectual Property Insurance Services Corporation, Approved Opining Counsel