Foley & Lardner LLP

J. Steven Rutt

Partner

J. Steven Rutt is a partner with Foley & Lardner LLP. He is a member of the Chemical, Biotechnology & Pharmaceutical Practice. His practice includes patent counseling, IP licensing and agreements, including technology transfer carried out under the Bayh-Dole Act, patent landscaping and clearance opinions, patent prosecution, patent litigation support, trade secrets, and trademarks. His technology background is with materials and polymers, including applications in nanotechnology, cleantech, nanobio and nanomedicine, printed electronics, pharmaceuticals, semiconductors, and biotechnology. An area of focus for Dr. Rutt is coordinating the delivery of all aspects of IP legal services to emerging companies and representing them in their agreement negotiations.

Dr. Rutt is a frequent writer and conference presenter with respect to nanotechnology/cleantech and the law, actively helping to lead and participate in Foley's Nanotechnology Industry Team and cleantech efforts. He serves as Foley's nanotech-cleantech blog editor (www.nanocleantechblog.com). Dr. Rutt also is a member of the NanoBusiness Alliance Advisory Board, as well as a member of the Technical Advisory Committee for the Pennsylvania NanoMaterials Commercialization Center. He is also actively involved with the ASTM subcommittee on IP & nanotechnology and in legal training programs providing CLE. In addition, he is the author of a dozen scientific publications and inventor on four patents. His experience includes nine years of hands-on research in polymer synthesis and morphological studies, and his experience in private industry includes two years of corporate chemical research with NTT in Tokyo, Japan.

His recent presentations include:

  • Panelist, "Myriad Ping-Pong: Are Isolated Genes Patentable?" American University, Washington College of Law, April 12, 2013
  • Invited presentation, "New U.S. Patent Law: Updates & First Experiences" presented in Munich, Germany to Munich area law firm and companies, January 14, 2013
  • Panel moderator, "Competing in the New Patent Era - Major Shifts Begin," 11th Annual NanoBusiness Conference, Boston, September 5, 2012
  • Invited presentation, "Trends in Nanotechnology and Advanced Materials," USPTO - PTO Tech Fair, July 24, 2012
  • Panelist, "Will New Post-Grant Review Processes Benefit Pharmaceutical or Tech Industries, and How Will it Change the Practice of Patent Law?," American University CLE Event, Washington D.C., January 25, 2012
  • "A New Patent Era? Reform and Recent Court Decisions Impacting IP Strategy and Valuation," Nanomanufacturing Summit 2011, Boston, September 26, 2011
  • "Nanotechnology Patenting & Standards," ASTM International, Anaheim, May 16, 2011
  • "Cleantech Patenting: A Dynamic, Maturing Landscape," First PTO Cleantech Customer Partnership Meeting, April 27, 2011
  • "Nanobio and IP: Avoiding Pitfalls, Adding Value," North Carolina Nanotechnology Commercialization Conference, Charlotte, NC, March 29-30
  • Panel moderator, "Competitive Commercialization Strategy: Leveraging Government Funding," Cleantech Forum, San Francisco, March 14-16, 2011
  • Panel moderator, "NNI's Revised Commercialization Strategy: Know the Risks Involved to Safeguard your IP," NanoBusiness Alliance 2010 Conference in Chicago, IL, September 2010
  • "University Patenting: Why Important," University of Texas, Dallas Seminar, February 2010
  • "Recent Legal Developments Relevant to Nanomedicine," American Society for Nanomedicine, October 2009
  • "Counseling Clients on PCT, EPO, and ex-US Patenting," July 2009
  • Panel moderator on IP Due Diligence, Houston NSTI TechConnect Conference, May 2009
  • "Legal Aspects of Commercializing Technology," National Nano Engineering Conference (NNEC2008) in Boston, November 2008
  • Regenerative Therapies in London, October 2008
  • "Patent Counseling Including Inventorship, Ownership, Licensing, Contracts, Due Diligence, Bayh-Dole Act, and Trade Secrets," October 2008
  • NSTI Nanotechnology and Cleantech Conferences in Boston, June 2008
  • Panel moderator at NanoBusiness Alliance Conference on Nanotechnology in Health Care, May 2008
  • Presented two separate topics at the Licensing Executive Society meeting on Quality Nanotechnology Patents and Nanotechnology Patent Licensing, May 2008
  • Panel moderator between venture capitalists and an equity analyst on nanotechnology-cleantech investment, IBF Nano Applications Forum in Palm Springs, February 2008
  • Roundtable moderator on patent strategy, including inputs from the Patent and Trademark Office's nanotechnology administrator and European patent counsel, February 2008
  • Presented on the topic of nanotechnology IP to OnSETT (an Ontario technology transfer group) in Toronto, October 2007
  • Presented on the topic of IP due diligence to an Orlando angel investor group, October 2007
  • "NNI's Impact Measured in Patents," presented to the President's Counsel of Advisors on Science and Technology (PCAST), June 2007

Dr. Rutt's legal papers have been published widely. Selected recent works include:

  • "Defense Drivers for Nanotechnology Commercialization: Technology, Case Studies, and Legal Issues," Nanotechnology Law & Business, Vol. 9, No. 4, Spring-Summer 2012
  • "Global Warming U.S. Patent Filings Exploding," www.nanocleantechblog.com, May 19, 2010
  • "Nanotech Continues to Fuel Cutting Edge Cleantech," www.nanocleantechblog.com, May 17, 2010
  • "Biofuels Developments: Government Support Continues, Patent Activity Exploding," www.nanocleantechblog.com, May 4, 2010
  • "IP Disputes and Nanotechnology Company Bankruptcies," Nanotechnology Law and Business, Vol 6, No. 3, Fall 2009
  • "Review of A Consumer's Guide to MEMS & Nanotechnology," Nanotechnology Law and Business, Vol. 5, No. 1, Spring 2008
  • "New Patent Rules Will Dramatically Impact Nanotechnology Patenting," Nanotechnology Law & Business, Vol. 4, No. 4, Winter 2007
  • Commentary on obviousness for nanotechnology patenting after KSR published in the Journal of the Patent & Trademark Office Society
  • Detailed case review of the Federal Circuit's 2006 decision in Zoltek v. U.S. (on government liability for importation patent infringement), Nanotechnology Law and Business Journal, Vol. 3, Issue 4, 2006
  • "Simple steps make complex patenting system manageable," invited column, Small Times
  • "Top Developments to Watch in Nanotechnology Law," The SciTech Lawyer, Vol. 2, Issue 3, Winter 2006
  • "What Hath Congress 'CREATEd?' New Patent Legislation, CREATE, Directed to Joint Research Agreements," Nanotechnology Law & Business Journal, Vol. 2, Issue 2, 2005
  • Japan Bayh-Dole article in Legal Times, April 2005
  • "From Plastics to Nanotechnology: Cambridge Display Technology's IPO Registration," Nanotechnology Law & Business Journal, Vol. 1, Issue 4, 2004
  • "Technology Transfer Under Japan's Bayh-Dole: Boom or Bust Nanotechnology Opportunities," Nanotechnology Law & Business Journal, Vol. 1, Issue 3, 2004
  • Book review, "Innovation and Its Discontents," Nanotechnology Law & Business Journal Vol. 2, Issue 1, 2005

Dr. Rutt received his law degree from Georgetown University Law Center in 1999. His chemistry doctorate was conferred in 1990 by The Pennsylvania State University (where he was a Braddock Fellow), and he holds a bachelor's degree in chemistry from Goshen College.

Dr. Rutt is a member of the Licensing Executive Society (LES) and the Association of University Technology Managers (AUTM).

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