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Brad D. Pedersen

Attorney Profile

Top Rated Intellectual Property Attorney in Minneapolis, MN

Patterson Thuente IP
80 South Eighth Street, Suite 4800
Minneapolis, MN 55402
Phone: 612-361-0309
Fax: 612-349-9266
Selected to Super Lawyers: 2008 - 2021
Licensed in Minnesota Since: 1986
Practice Areas: Intellectual Property
Attorney Profile

Attorney Brad D. Pedersen is a shareholder and chair of the patent practice group at Patterson Thuente Pedersen in Minneapolis, Minnesota. Mr. Pedersen has more than three decades of experience practicing in the area of intellectual property prosecution, strategy and enforcement. His practice focuses on strategic patent portfolio development, transactional intellectual property matters, IP due diligence, and enforcement, including post grant proceedings such as inter partes review (IPR). He represents clients, including entrepreneurs and technological innovators in Minnesota and nationwide.

Brad has significant experience with post grant practice at the PTAB, representing both petitioners and patent owners in IPR proceedings. His involvement in the changes in intellectual property law over the past decade led him to co-author 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).

Over the course of his career, Mr. Pedersen has successfully represented clients in numerous complex intellectual property matters. As an entrepreneur and inventor, he has the knowledge and background to provide high-quality representation to his clients, who are involved with technologies, including digital health, computers, drone technology, medical devices, remote sensing, robotics, software, artificial intelligence, and more.

In addition to his practice, Mr. Pedersen is the author of intellectual property-related articles and a speaker at conferences and seminars. He is a member of the Minnesota State Bar Association, the Minnesota Intellectual Property Law Association, the Association for Computing Machinery, and the Institute for Electrical And Electronics Engineers. He is a past member of the board of directors for the American Intellectual Property Law Association. 

The recipient of several awards for his accomplishments, IAM magazine named Mr. Pedersen one of the 50 most recommended attorneys in the country for post grant proceedings, as well as among its IAM 1000 Top Patent Practitioners ranking. He has been listed in the Best Lawyers in America publication several years in a row and the Minnesota Intellectual Property Law Association presented him with the organization’s President’s Award in 2012.

Mr. Pedersen earned a bachelor’s degree in electrical engineering from South Dakota State University and graduated cum laude from the University of Minnesota Law School. He is also a graduate of the exponential technologies executive program at Singularity University.

Practice Areas
  • 100%Intellectual Property
Focus Areas

Patents, Trademarks, Intellectual Property Law

Selections

14 Years Super Lawyers
  • Super Lawyers: 2008 - 2021

White Papers

  • US Patent Reform: What Changes? (2011) - The Leahy-Smith America Invents Act was signed into law on September 16, 2011, representing drastic changes to come for the US patent system. This paper outlines the key changes and discusses how they are likely to affect patent practice.

About Brad D. Pedersen

First Admitted: 1986, Minnesota

Professional Webpage: https://ptslaw.com/attorney/brad-pedersen/

Other Outstanding Achievements

  • Represented Polaris Wireless in an Inter Partes Review proceeding involving challenge to the constitutionality of review proceedings under the AIA.
  • 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, 2019
  • Argued one of the first Oral Hearings for an Inter Partes Review proceedings on behalf of a patent owner.
  • 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, 2016
  • Patent law expert witness in the patent infringement lawsuit between Sun and Cisco over advanced features of router technology
  • Named inventor on six issued U.S. patents and a dozen pending applications on technologies ranging from medical devices to unmanned aircraft

Honors/Awards

  • IAM Patent 1000, 2012 - 2020.  "At the forefront of the practice is AIPLA board member Brad Pedersen, the only lawyer in Minnesota to be recommended on each of the IAM Patent 1000’s prosecution, litigation and transactions tables. Inventors, business executives and in-house counsel all find him easy to communicate with and relate to, because he is one of them – he knows their challenges and how best to find the right solutions to them." The IAM Patent 1000 has become the definitive directory exclusively dedicated to identifying the world’s leading patent services providers. The extensive research process for this guide was conducted over several months by a team of full-time analysts and involved more than 1,700 interviews with patent specialists across the globe…The publication, therefore, serves as a one-stop reference source for anyone seeking patent services. Nicholas Richardson, research editor for the IAM Patent 1000, explains: “In the world of commerce, patents have become pivotal in driving corporate value and profitability. When it comes to obtaining, enforcing and monetizing these vital commodities, private practice lawyers and patent attorneys play an essential role; selecting the right specialist is of paramount importance. The IAM Patent 1000 delivers the most in-depth coverage of the market yet undertaken, pinpointing the best of the best in prosecution, litigation and licensing. The listings and editorial provide readers with a truly comprehensive overview of patent services around the world, making the IAM Patent 1000 an essential tool for all IP decision makers,” 2013, IAM Patent 1000, IAM Magazine
  • Best Lawyers, 2013 - 2020, Best Lawyers in America, Best Lawyers
  • Minnesota Super Lawyers, 2008 – 2020
  • PatentBuddy Top Patent Prosecutor
  • Minnesota Lawyer Attorneys of the Year, 2012
  • MIPLA President's Award, 2012

Scholarly Lectures/Writings

  • Novel Idea: Know How, When to Protect Intellectual Property, Upsize Minnesota, March 2007
  • “Patents After the AIA: The Helsinn Case,” AIPLA Patent Bootcamp, February 9, 2018, Speaker, Patents After the AIA: The Helsinn Case, AIPLA , 2018
  • Artificial Intelligence and Its Impact on Society, Law and Lawyers, Speaker, Artificial Intelligence and Its Impact on Society, Law and Lawyers, MSBA Corporate Counsel Institute, Mitchell Hamline School of Law, 2018
  • AIPLA Dicta Podcast, Panelist, Helsinn v. Teva, AIPLA , 2018
  • Patent Cases and the America Invents ActThe wave of America Invents Act (AIA) patentsis only now breaking onto the shores of districtcourt patent cases. Since the AIA changed theU.S. patent system from a first-to-invent to afirst-inventor-to-file system in 2013, there havebeen only about a hundred reported districtcourt decisions involving AIA patents. Many ofthose reported decisions incorrectly cited theAIA prior art statutory provisions (35 U.S.C.102(a)(1) and 102(a)(2)) for patents that actually were pre-AIA patents. Given that most litigated patents are invalidated based on olderprior art relative to the priority date of the patent, the changes to what is and is not priorart after the AIA likely will affect only a smallpercentage of patent cases. But, if your caseinvolves prior art that is relatively close in timeto that priority date of the patent you are challenging, understanding the key differencesbetween what prior art for AIA patents versus pre-AIA patents is will be critical to whetheryou are successful in invalidating an AIA patent.This presentation will provide you with a setof simple flow charts to help you through theanalysis of what is prior art after the AIA andwill highlight important considerations to keepin mind when the defense of your case turnson invalidating an AIA patent, Speaker, Patent Cases and the America Invents Act, DRI, 2020
  • It has been almost two years since the Supreme Court decision in Helsinn on whether private sales by an inventor more than one-year before the first filing date remain prior art after the AIA. District courts have started to grapple with the impact of Helsinn on related question about on-sale prior art and are coming up with different answers for different fact patterns: What if the sale is by the inventor, but less than one year before the effective filing date?  What if the sale is a private sale of a prototype to the inventor, not by the inventor?  What if the sale is a private sale by a third party before the effective filing date, and what if that third party is later a defendant in an infringement suit? If the private sale is only an offer for sale, who makes the invention “ready for patenting” in order to qualify as being on sale?  And, what if any of these fact patterns need to be submitted to the USPTO to satisfy your duty of candor, and, if you do need to submit something, how do you accomplish that submission and still protect the confidentiality of your client’s private communications. Learn from the authors of the Prior Art After the AIA Guidebook how to spot these kinds of on sale issues, and how to do your best to avoid having one backfire on you or your clients. Presented by:  Brad Pederson of Patterson Thuente Pederson, P.A. and Gregory Allen of The Law Offices Of Gregory Allen, PC., Speaker, Prior Art After AIA: Part 1, AIPLA Webinar, 2020
  • SAS: When the Patent Office Institutes IPR it Must Decide Patentability of all Challenged Claims, IPWatchdog.com, April 25, 2018, SAS: When the Patent Office Institutes IPR it Must Decide Patentability of all Challenged Claims, IPWatchdog.com
  • The Supreme Court and IPRs - a Mixed and Messy Bag of Results, PatentlyO.com, April 26, 2018, Author, The Supreme Court and IPRs - a Mixed and Messy Bag of Results, PatentlyO.com
  • 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
  • “2012 and Beyond: Future Technology,” moderator, Minnesota High Tech Association (MHTA) Annual Conference, Minneapolis, MN, April 2012
  • Patent Pending, Minnesota Business, January 2008
  • 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
  • The Matrix for First-Inventor-to-File: An Experimental Investigation into Proposed Changes to U.S. Patent Law, Social Science Research Network, December 2009
  • Suggestions for Improving the Rules for Inter Partes Reexaminations: Another Look, paper for BPAI First Annual Board Conference, April 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
  • Amicus brief on behalf of the firm in Therasense v. Beckton Dickinson, July 2010
  • 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
  • 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
  • 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
  • Patent Litigation Under First-Inventor-to-File: How Long Will We Wander in a Wilderness? ABA Business Law Today, September 2012
  • 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
  • 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
  • Big Changes for Patent Law: An Update on the America Invents Act, Minnesota Lawyer, March 10, 2013
  • Patent Litigation: Too Much as Compared to What?, IP Watchdog, July 8, 2013
  • “The America Invents Act: What You Need to Know,” National CLE Conference, Snowmass, CO, January 2013
  • “The America Invents Act (AIA),” National Institutes of Health, Besthesda, MD, June 2012
  • “AIA First Inventor to File: Proposed Rules and Guidelines,” USPTO Roundtable, September 6, 2012
  • “First-Inventor-to-File (FITF) and Other AIA Prosecution Changes: What’s Your Strategy?” Midwest IP Institute, Minneapolis, MN, September 2012
  • “The America Invents Act (AIA),” University of Minnesota Patent Law Class, Minneapolis, MN, November 2012
  • “AIA Patent Etiquette for Effective Filing Dates and Other AIA Best Practices,” 9th Annual Advanced Patent Law Institute, January 2014, Alexandria, VA
  • “First-to-File: Final Rules and Guidance – Navigating Significant Changes to Derivation Practice, What Constitutes Prior Art and More,” Strafford webinar, March 2013
  • “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
  • “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
  • “Automated Snapshot Capture,” USPTO Software Partnership Meeting, December 2013, Alexandria, VA
  • “First-Inventor-to-File: Problems, Ambiguities and Practical Solutions,”  9th Annual Advanced Patent Law Institute, January 2014, Alexandria, VA
  • “Patent Prosecution Under the AIA,” AIPLA Patent Law Boot Camp, April 28, 2015
  • PTAB AIA Trial Roundtable, May 2014, Detroit, MI
  • “IP for Medical Tech,” University of Minnesota, Minneapolis, MN, September 2014
  • “UAVs and IP Law,” Robotics Alley Conference, September 2014, Minneapolis, MN
  • “The Bar’s Response to Proposed Rule Changes,” AIPLA/USPTO Road Show Series, August 2015
  • Panel on Administrative Aspects (Non-Hearing) of AIA Trials, AIPLA|USPTO PTAB Bench and Bar Conference, Alexandria, VA, June 2015
  • “IP for Careers and Practice in Medical Tech,” University of Minnesota, Minneapolis, MN, September 2017
  • “Patents After the AIA: Evolving Law & Practice,” University of Minnesota Law School, Minneapolis, MN, March 2015
  • “Patents After the AIA: Evolving Law & Practice,” AIPLA webinar series, April – May 2016
  • “Patents After the AIA: Evolving Law & Practice Under Section 102,” AIPLA 2016 Chemical Practice Boot Camp, Minneapolis, MN, May 2016
  • “The Hunt for Prior Art,” CPA Global Webinar, April 2017
  • “Patents After the AIA, ” AIPLA Patent Practice Bootcamp, 2017
  • “Open Source: What Your CEO Needs to Know,” Minnesota Information Professional Society 13th Annual Education Seminar, St. Paul, MN – April 2008
  • “Primer on Patent Rights, Singularity & Infropy,” University of Minnesota ProSeminar, Minneapolis, MN, December 2017
  • “Primer on Patent Rights,” Bloomberg BNA internal, December 6, 2017
  • “Patents After the AIA: The Helsinn Case,” AIPLA Patent Bootcamp, February 9, 2018
  • “Artificial Intelligence and Its Impact on Society, Law and Lawyers,” MSBA Corporate Counsel Institute, Mitchell Hamline School of Law, March 9, 2018
  • “The New PTO Rules,” (co-presented with Deputy for Patent Examination Policay, John Love), Midwest IP Institute (Midwest CLE), Minneapolis, MN – September 2007
  • “The Changing Landscape of Patent Law,” University of Minnesota Design of Medical Devices Conference, Minneapolis, MN – April 2008
  • “The New Patent Law – More Complicated than 3D Chess?” Minnesota State Bar Association CLE, Minneapolis, MN, October 2011
  • “The Changing Role of Patent Strategy,” LifeScience Alley R&D SIG, September 2009
  • “Patent Law Reform Update: What it May Mean for the Average Practitioner,” MN-CLE, March 2010
  • “Inter Partes Reexam,” Board of Patent Appeals and Interferences Annual Board Conference, Washington DC, April 2010
  • Participant in USPTO-Patent Public Advisory Committee Quality Task Force public roundtable on Enhancement of Quality in Patents, Los Angeles, CA, May 2010
  • “Protecting Your IP Rights Globally Identifying Infringers & What To Do” Thomson Reuters IP Leadership Exchange, Chicago, IL, April 2010 & New York, NY, June 2010
  • “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
  • “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
  • “Patent Reform Update: What it Means for Practicing Patent Lawyers,” 2011 Midwest IP Institute, Minnesota CLE, September 2011
  • “America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice,” Practicing Law Institute, September 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
  • “Intellectual Property in the Medical Device Industry,” University of Minnesota, Minneapolis, MN, April 2012
  • “Overview of the New Patent Law,” Minnesota CLE, October 2011 (conference chair)
  • “The America Invents Act (AIA) Key Issues for Foreign Practice and International Law,” William Mitchell College of Law, St. Paul, MN, November 2011
  • “The New Patent Law – More Complicated than 3D Chess?” University of Minnesota SIPLA Program, Minneapolis, MN, November 2011
  • “Patent Reform: First to File Provisions,” Strafford webinar, November  2011
  • “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
  • Patent and IP Wishes for 2015, IP Watchdog, January 4, 2015
  • National Editorial Board Member, Thompson Reuters, Ideas On Intellectual Property Law
  • Principal Committee Author, AIPLA Response to the “Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board,” October 2014
  • 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
  • Co-author, 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, 2006
  • Foreword, Cybaris® an Intellectual Property Law Review, Vol. 6, Issue 2, 2015
  • Fed. Circ. Vacates Re-Exam Ruling After Patent Expires, Law360, January 14, 2016
  • Patent Losers Piggyback on Supreme Court Constitutionality Review, Bloomberg BNA, August 3, 2017
  • SAS: When the Patent Office Institutes IPR it Must Decide Patentability of All Challenged Claims, IPWatchdog.com, April 25, 2018
  • The Supreme Court and IPRs – A Mixed and Messy Bag of Results, PatentlyO.com, April 26, 2018
  • Co-Author, Prior Art After the AIA: A Practical Guide, Alan J. Kasper, Ann M. Mueting, Gregory D. Allen, and Brian R. Stanton, Bloomberg BNA, 2019
  • Novel Idea: Know How, When to Protect Intellectual Property, Upsize Minnesota, Article
  • Co-author, Patents After the AIA: Evolving Law and Practice, Bloomberg BNA, www.bna.com/patents-aia-evolving-p57982059262/, 2016
  • Co-author, 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 Review, open.mitchellhamline.edu/cybaris/vol4/iss1/2/, 2013
  • Patent Litigation Under First-Inventor-to-File: How Long Will We Wander in a Wilderness? ABA Business Law Today, www.americanbar.org/publications/blt/2012/09/03_pedersen.html, 2012
  • On the Road to Patent Harmonization: An Overview on the AIA and Its Impact on Patent Applicants, Owners & Practitioners, MN-CLE IP Book, 2012
  • The Matrix for Changing First-to-Invent: An Experimental Investigation into Proposed Changes to U.S. Patent Law, Cybaris: An Intellectual Property Law Review, 2010

Bar/Professional Activity

  • United States Patent & Trademark Office
  • U.S. District Court, District of California
  • Supreme Court of California
  • Supreme Court of Minnesota
  • U.S. District Court, District of Minnesota
  • U.S. Court of Appeals for the Federal Circuit
  • American Intellectual Property Law Association (AIPLA), Board of Directors, 2017
  • Minnesota State Bar Association
  • Minnesota Intellectual Property Law Association (MIPLA) – Chair of IP Law Revisions Subcommittee
  • Association for Computing Machinery
  • Institute for Electrical and Electronics Engineering

Educational Background

  • South Dakota State University, B.S. in Electrical Engineering, Honors: Four-Year Briggs Scholarship, 1981
  • Singularity University, Exponential Technologies Executive Program, 2010

Pro bono/Community Service

  • Provides pro bono representation for the homeless and individual inventors
  • Institute for Electrical & Electronics Engineering

Industry Groups

  • Computers And Software
  • High-technology
  • Medical Devices
  • Nanotechnology
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Office Location for Brad D. Pedersen

80 South Eighth Street
Suite 4800
Minneapolis, MN 55402

Phone: 612-361-0309

Fax: 612-349-9266

Last Updated: 4/9/2021

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