Peter F. Malen

An intellectual property attorney for nearly 26 years, Pete Malen is a shareholder in the firm with a broad range of technical and legal experience. Beginning his professional career as a mechanical engineer, Pete worked in various technical capacities with the U.S. Department of Defense, where he gained over a decade of experience in the design and troubleshooting of mechanical systems on aircraft carriers and other surface ships. Since transitioning to the practice of law, Pete has assisted clients in protecting their technological innovations in a variety of fields, including:

· Artificial Intelligence and Machine Learning

· Computer software

· Computing system hardware and operations

· Data science and data management

· Electrical and electronic systems and devices

· Fiber optics systems and components

· Manufacturing

· Mechanical systems and devices

· Mining systems and equipment

· Quantum computing

· Sporting goods

Pete’s legal experience includes assisting clients in identification of their intellectual property, and developing and implementing IP protection strategies, including preparing and prosecuting patent and trademark applications, both in the U.S. and in foreign jurisdictions such as Europe, Japan, China, Taiwan, Korea, India, Brazil, Chile, Australia, Mexico, and South Africa. Pete also has experience in preparing opinions as to infringement and validity, as well as in performing infringement investigations, and due diligence investigations.

Experience

U.S. Trademark Oppositions and Cancellations Appeals before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office

U.S. and International Prosecution of IP, Patent, and Trademark Infringement

U. S. and Foreign Licensing of Intellectual Property Rights, including Patents, Trademarks, Copyrights, Trade Secrets, and Know How

Employment Agreements and Invention Ownership

Non-Disclosure Agreements

Assignments of Intellectual Property Rights

Mechanics and Mechanical Engineering

Electronics and Electrical Engineering

Physics and Optics

Computer Systems, Software, E-Commerce, Business Methods & Information Technology

Opinions regarding Patent Searches, Patentability, Freedom to Operate, Trademark Searches and Clearance, Patent Infringement Opinions, and Defensive Opinions of Non-infringement and Design Around Strategies

Agriculture Science

Education & Admissions

Education

J.D., cum laude, Seattle University Law School, 1998

B.S., Mechanical Engineering, Gonzaga University, 1985

Admissions

Supreme Court of Utah

Registered Patent Attorney, U.S. Patent and Trademark Office

Licensed Professional Engineer (mechanical) in the State of Washington

U.S. District Court for the District of Utah

U.S. Court of Appeals for the Federal Circuit

Memberships & Activities

American Society of Mechanical Engineers (ASME)

American Intellectual Property Lawyers Association (AIPLA)

International Trademark Association (INTA)

International Federation of Intellectual Property Attorneys (FICPI)

Board of Directors, Workman Nydegger, 2011-2012, 2014 – 2015, 2017 – present

Executive Committee member, Utah ASME Chapter, 2012-2015

Volunteer, Cottonwood Canyons Foundation (CCF) and U.S. Forest Service, 2013, 2015

Volunteer, Ronald McDonald House, St. Vincent DePaul, Salt Lake City Welfare Square, Utah Food Bank, and City of Salt Lake

Jordan High School Career Day, 2016

Insights & Events

Context Matters Jul 26, 2023

The Court of Appeals for the Federal Circuit recently decided Axonics, Inc. v. Medtronic, Inc., 2022-1451, 2022-1452, (July 10, 2023) (Appeals taken from the United States Patent and Trademark Office, Patent Trial and Appeal Board… read more

Workman Nydegger
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