In the early years of his practice, he was engaged in trial practice, and assisted in successfully conducting several of the first major litigation matters handled by the Firm. Mr. Nydegger later developed an extensive prosecution practice.

Mr. Nydegger is also experienced in a variety of related intellectual property transactional matters, including preparation and drafting of opinions, licensing transactions, and conducting due diligence for the intellectual property portfolios of clients involved in early or later stage funding transactions as well as in connection with various kinds of asset or corporate acquisitions.

Mr. Nydegger was invited in 1999 to become a member of the National Patent Board, a non-profit entity founded to provide access to experienced intellectual property attorneys for mediating patent disputes, and he has mediated and also served as an arbitrator in a number of major patent cases.

Mr. Nydegger is a well-respected authority in the field of patenting software, e-commerce and information science technology, and has lectured frequently both nationally and internationally on that topic. He has published a number of articles, and has authored and co-authored several chapters in the treatise Electronic and Software Patents: Law and Practice (BNA Apr. 2000, 2d Ed. 2005).

Mr. Nydegger currently serves as president and managing director of the firm.

Primary Practice Focus

• U.S. Prosecution of IP
  • Patent Prosecution
  • Trademark Prosecution
  • Copyright Registrations

• International Prosecution of IP
  • Patent Prosecution
  • Trademark Prosecution

Other Practice Experience

• Appeals
  • Before the U. S. Supreme Court
  • Before the Court of Appeals for the Federal Circuit and Other Regional Federal Circuit Courts of Appeal
  • Before the Board of Appeals and Patent Interference of the U. S. Patent and Trademark Office
  
  

• Complex IP Litigation, Inter Partes Conflicts & Mediation and Arbitration
  • Arbitration
  • Mediation
    
  • U.S. Trademark Oppositions
    
  • European Patent and Trademark Oppositions
  
  

• Licensing, Other Transactional Work & Client Counseling
  • U. S. and Foreign Licensing of Intellectual Property Rights, Including Patents, Trademarks, Copyrights, Trade Secrets, and Know How
  • Employment Agreements & Invention Ownership
  • Non-Competition Covenants
  • Non-Disclosure Agreements
  • Assignments of Intellectual Property Rights
  • Patentability Opinions
  • Trademark Searches and Clearance Opinions
  • Patent Infringement Opinions
  • Due Diligence Investigations of IP Portfolios During Acquisition or Merger Transactions
  • Defensive Opinions of Non-infringement and Design Around Strategies
  
  

Technical Experience

• Electronics & Electrical Engineering
  • Integrated Circuit Design
  • Electrical & Electromechanical Systems
  
  

• Computer Systems, Software, E-Commerce, Business Methods & Information Technology
  • Hardware Systems
  • Software Systems and Architecture
  • E-Commerce Technologies and Business Methods
  • Internet Technologies

• Mechanics & Mechanical Engineering
  • Medical and Dental Devices
  • Exercise & Training Equipment
  • Sports Equipment
  • Manufacturing Equipment
  
  

Second Language

Portuguese

Community Involvement

From 1989 to 1998, Mr. Nydegger served as an Adjunct Professor at the University of Utah S. J. Quinney Law School. From 1998 to 2003, he served on the adjunct faculty of Brigham Young University’s J. Reuben Clark Law School, where he helped to expand the school’s intellectual property curriculum, developing and teaching several intellectual property law courses.

Professional Accomplishments of Note

• Mr. Nydegger worked closely with the U.S. Patent and Trademark Office in the development of several important policy initiatives over the years, and participated in assisting PTO personnel with the drafting of several widely used Guidelines adopted by the U.S. Patent and Trademark Office for the use of its patent examining corp when conducting examination of software related inventions.

• In July of 2003 he was appointed by the Secretary of the Department of Commerce to a three year term as Chair of the Patent Public Advisory Committee, which was created by statute in 1999 to advise the United States Patent and Trademark Office on matters concerning the “policies, goals, performance, budget and user fees of the USPTO with respect to patents.” 35 U.S.C. § 5(d).

• He has been a frequent spokesman for the American Intellectual Property Law Association on legislative and regulatory developments. He was the principal author of the AIPLA’s response to the Commissioner’s Request for Comments on Computer-Related Inventions (1994), its amicus brief in In re Beauregard (1995), and its response to the European Patent Commission’s Green Paper Requesting Comments On the Patentability of Computer Software in the European Patent Office (1997). He served as spokesman for the AIPLA on the U.S. Patent and Trademark Office Roundtable On Business Method Patents (1999), and was asked to lead a special task force in working with the USPTO on the development of its 21st Century Strategic Plan.

• Co-Author, Brief Amicus Curiae of the American Intellectual Property Lawyers Association, Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 125 S. Ct. 2764 (2005) (filed Jan. 24, 2005).

Education

• J.D., cum laude, J. Reuben Clark Law School, Brigham Young University, 1977 (Honorary Member, Order of the Coif, 2002)
• B.S., cum laude, Brigham Young University, Electrical Engineering, 1974

Professional Admissions and Associations

• Utah State Bar


• Registered Patent Attorney


• American Intellectual Property Law Association (AIPLA)


• American Bar Association

Other Information of Interest

• Alumnus of the Year, Brigham Young University J. Reuben Clark Law School, 2005

• Honorary Alumnus of the Year, University of Utah S. J. Quinney Law School, 2004

• President, American Intellectual Property Law Association, 2003-2004

• Recognized by the Managing Partners of the Top 30 Law Firms in Salt Lake as the Best Intellectual Property Lawyer, August 2003 Edition of Utah Business

• President, National Inventors Hall of Fame Foundation, 2003 – 2005

• Inducted as a Fellow of the American Intellectual Property Law Association, one of twenty members to initially receive this recognition for outstanding service and leadership in the Association, 2000

• President, National Council of Intellectual Property Law Associations – 2000- 2001

• Listed in Who’s Who in American Law, 1999 – Present

• Listed in Best Lawyers in America, 1990 – Present

• Listed in the World’s Leading Patent Law Practitioners, 7th Edition