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Dr. Scott Rothenberger, Rothenburger, Fulbright & Jaworski L.L.P., intellectual property, patent prosecution, litigation, patent applications, pharmaceutical, chemical, biotechnology, nonwovens, membranes, surface modification, polymer and biomedical, patentability, due diligence, infringement, validity opinions, licensing
Scott Rothenberger - Fulbright & Jaworski LLP
Scott Rothenberger
Partner
D: +1 612 321 2801
Minneapolis
2100 IDS Center
80 South Eighth Street
Minneapolis, MN 55402-2112
T: +1 612 321 2800
F: +1 612 321 2288
"Helping clients solve intellectual property issues that are at the interface of business, law and science."
AREAS OF CONCENTRATION
EXPERIENCE

Dr. Scott Rothenberger joined Fulbright & Jaworski L.L.P. in 2009 as a partner in the intellectual property group. Dr. Rothenberger focuses his practice on patent prosecution, licensing and provides technical and legal support for intellectual property litigation matters.

Dr. Rothenberger has extensive experience preparing and prosecuting patent applications in the pharmaceutical, chemical, biotechnology, nonwovens, membranes, films, surface modification, business methods, polymer and biomedical arts. He also counsels clients on patentability, conducts due diligence assessments and provides infringement and validity opinions.

REPRESENTATIVE EXPERIENCE
  • Manages and oversees pharmaceutical patent portfolios of a leading research hospital
  • Guides startup companies in developing and implementing intellectual property strategies both offensively and defensively
  • Provides guidance to a pharmaceutical company regarding licensing and patent acquisition and enforcement
  • Successfully represented an industrial manufacturer in Ecuador in a patent suit with a finding of non-infringement
  • Helped to successfully defend a patent suit by securing a finding of invalidity of the asserted patents on several bases
PROFESSIONAL ACTIVITIES and MEMBERSHIPS
  • American Intellectual Property Law Association (AIPLA)
  • Minnesota Intellectual Property Law Association (MIPLA)
  • Minnesota Bar Association
  • Massachusetts Bar Association
  • Sigma Xi, Scientific Research Society
  • MN Biotechnology (now Medical Alley), past Board member 2002 - 2005
  • University Enterprise Laboratories, Inc., past Board member 2005 - 2008
PROFESSIONAL HONORS
  • Who’s Who in America
  • University of New Hampshire Recipient of a Dissertation Fellowship, 1984
  • Recipient of a Central University Research Fund Grant for an outstanding proposal by a graduate student, 1983
  • First recipient of the “Top Performer” award from Polymer Technology (a division of Bausch & Lomb) for the preparation of a novel monomer and polymer for a contact lens.
PUBLICATIONS
  • “Locking in a Target’s Software and Trade Secrets,” August 3, 2005
  • “Intellectual Property in M&A Transactions - What Diligence is Due?” (Part II), Volume 3, No. 6
  • “Intellectual Property in M&A Transactions - What Diligence is Due?” Volume 2, No. 11
  • Bell, T.W. et al, “9-n-Butyl-1,2,3,4,5,6,7,8,-octahydroacridin-4-ol” Org. Syn., Coll. Series, 1994
  • Bell, T.W. et al, “The Hexagonal Lattice Approach to Molecular Receptors,” Inclusion Phenomena and Molecular Recognition, 49, 1990
  • Co inventor, U.S. Patent 5,032,658 entitled “Polymeric Compositions Useful in Oxygen Permeable Contact Lenses”
  • Co inventor, U.S. Patent 5,177,168 entitled “Polymeric Compositions Useful in Oxygen Permeable Contact Lenses"
  • Co inventor, U.S. Patent 5,283,299 entitled “Aqueous Coating Compositions”
  • Co inventor, U.S. Patent 5,346,978 entitled “Polymeric Compositions Useful in Oxygen Permeable Contact Lenses
SPEECHES
  • Fulbright Forum: "Turning Ideas into Reality: Protecting and Managing Patent Portfolios", September 1, 2009
  • “Patent Reform Updates and Implications,” BIO IPCC Spring Conference, April 2008
  • “Inventions 101: Patents, Licensing & Portfolio Management,” University Enterprise Laboratories, Inc. / Medical Alley, February 8, 2006
  • “Licensing of Inventions,” University of Minnesota, April 2005
  • “Describing Your Biotech Invention: How Much is Enough for a U.S. Patent?,” MNBio Members-Only Breakfast, June 18, 2003
EDUCATIONAL BACKGROUND

1995 - J.D., Franklin Pierce Law Center
1987 - Postdoctoral Fellowship, SUNY Stony Brook (with Professor Thomas Bell)
1986 - Postdoctoral Fellowship, University of South Carolina (with Professor James Marshall)
1985 - Ph.D., Organic Chemistry, University of New Hampshire
1981 - B.S., Chemistry, Albright College

Dr. Rothenberger is admitted to practice in Minnesota, Massachusetts and before the United States Patent and Trademark Office.

INTERESTS

Scott enjoys all outdoor sports, listening to music and spending time with his wife and two sons.

CIVIC INVOLVEMENT
  • Adjunct Professor at Franklin Pierce Law Center, Concord, New Hampshire, 1997 through 2001
  • Adjunct Professor at Hamline University School of Law, St. Paul, Minnesota, 2006






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