Paul J. Otterstedt

Paul Otterstedt

Paul has been practicing intellectual property law since 1994, and has worked both as an in-house attorney for a Fortune 100 company and in private practice. He holds a Juris Doctor degree magna cum laude from St. John’s University (where he was a member of the Law Review), a Bachelor of Engineering degree in Mechanical Engineering summa cum laude from Manhattan College, a Master of Science degree in Mechanical Engineering from Columbia University, and a Master of Science degree in Electrical Engineering from Polytechnic University (now New York University Tandon School of Engineering).  Paul’s practice
focuses on the preparation and prosecution of patent applications in the electrical, electronic, software, and mechanical arts, as well as related counseling, licensing, due diligence, and opinion work.

Paul is admitted to practice before the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit, the U.S. District Courts for the Southern and Eastern Districts of New York, in the state courts of Connecticut and New York, and before the U.S. Patent and Trademark Office. Paul is currently a faculty member at TRTCLE, Corp. in New York.  He has previously served as a co-chair for the Fundamentals of Patent Prosecution course at the Practicing Law Institute.  Paul’s article Unwrapping File Wrapper Estoppel in the Federal Circuit: A New Economic Policy Approach, 67 St. John’s L. Rev. 405 (1993), was cited in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 56 USPQ2d 1865, 1915 (Fed. Cir. 2000)(Linn, J., dissenting). Paul
successfully prosecuted U.S. Patent No. 6,529,871, which was named one of “Five Killer Patents” of 2003 by the MIT Technology Review.

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