Overview

Pete Malen is a shareholder in the firm with a broad range of technical and legal experience. He began his professional career as a mechanical engineer and 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 for over 20 years in protecting their technological innovations in a variety of fields, including:

  • Sporting goods
  • Mechanical systems and devices
  • Electrical and electronic systems and devices
  • Manufacturing
  • Computer software
  • Data science and data management
  • Artificial Intelligence and Machine Learning
  • Fiber optics systems and components
  • Mining systems and equipment
  • Quantum computing
  • Computing system hardware and operations

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

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
  • 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
  • Mechanics and Mechanical Engineering
  • Electronics and Electrical Engineering
  • Computer Systems, Software, E-Commerce, Business Methods & Information Technology
  • Physics and Optics
  • Agriculture Science
  • Workman Nydegger Board of Directors, 2011-2012, 2017-present

Education

Education
  • J.D., cum laude, Seattle University Law School, 1998
  • B.S., Mechanical Engineering, Gonzaga University, 1985

Admissions

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

Community Involvement

Community Involvement
  • 2012-2015, Executive Committee member, Utah ASME chapter
  • 2013, 2015, Volunteer, Cottonwood Canyons Foundation (CCF) and U.S. Forest Service
  • 2012-2016, Volunteer, Ronald McDonald House, St. Vincent DePaul, Salt Lake City Welfare Square, Utah Food Bank, City of Salt Lake
  • 2016 Jordan High School Career Day

Memberships

Memberships
  • American Society of Mechanical Engineers (ASME)
  • American Intellectual Property Lawyers Association (AIPLA)
  • International Trademark Association (INTA)

Speaking Engagements

Speaking Engagements
  • Snowsports Industries of America (SIA) Snow Show 2015 Denver, CO
  • Snowsports Industries of America (SIA) Snow Show 2016, Denver, CO
  • ASME Utah – Student in Industry Day 2016
  • Snowsports Industries of America (SIA) Snow Show 2017, Denver, CO
  • Sometimes, Being Methodical May Not be Enough

    It is common practice in patent applications for software implemented inventions to include patent claims of various types, such as...
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  • Making Your (Virtual) Mark in the Patent World

    In order to recover damages for infringement of a patent, the patentee must give adequate notice to the public that...
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  • Even if Cited Art is Ancient History, Your Claims Might Still be History: ‘Old’ Art Cited in Office Actions

    The patent statute provides in part that “…Whoever invents or discovers any new and useful process, machine, manufacture, or composition...
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  • Who is an Inventor on a Patent Application? Not just any Tom, Dick, or Harry…

    From time to time, when exploring the question of inventorship with a client, I’ve been told things along the lines...
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  • Overriding Patents – The Naloxone Dilemma

    With no end in sight to the ongoing, and widening, opioid epidemic in the United States, politicians, public health officials,...
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  • Shoulda, Coulda, Woulda…A Combination is Not Obvious Simply Because it Could Have Been Made

    At one time or another, most practitioners have probably been faced with the contention by an Examiner that a claimed...
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  • When ‘Because I Said So’ Is Not Enough

    Many, if not, most patent practitioners have been faced with an obviousness rejection under 35 USC 103 in which the...
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  • IP Considerations and Strategies for Small to Medium-Sized Companies

    Snow sports enthusiast and Workman Nydegger Shareholder, Peter F. Malen Jr. presented at the SnowSports Industries America (SIA) Snow Show...
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  • Why should reference teachings be combined? Maybe it’s not so obvious after all

    This note concerns the obligation of the USPTO Patent Trial and Appeal Board (PTAB) to adequately explain why a claim...
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Sherice Atterton

Experience

  • Over 25 years legal experience
  • Over 12 years IP experience

Education

  • Certified Paralegal
  • Associate’s Degree in Legal Studies

Contact Information
Email SAtterton@wnlaw.com
Phone 801-533-9800

Rachelle Turner

Experience

  • Patent and Trademark Prosecution, U.S. and foreign

Education

  • Certified Paralegal, National Association of Legal Assistants, Inc., 2011
  • B.S., magna cum laude, Paralegal Studies, Utah Valley University, 2010

Contact Information
Email RTurner@wnlaw.com
Phone 801-533-9800

View her full bio here.