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Steve Schaefer

Principal | Twin Cities | 612-337-2508 | schaefer@fr.com

Stephen Schaefer is a Principal in the Twin Cities office of Fish & Richardson P.C., and practices in the area of patents, serving large and small companies in the medical device and electronics industries. Mr. Schaefer devotes much of his time on contested patent matters in the U.S. Patent and Trademark Office, and on licensing and other contractual agreement matters. Mr. Schaefer also serves clients in the following core areas of patent practice: patent portfolio strategy and development; patent landscape and freedom to operate (right to practice) studies; intellectual property due diligence in connection with acquisitions and client investment decisions; patent infringement litigation strategy (with the benefit of having worked early in his career exclusively on patent litigation matters, including three major patent trials).

Mr. Schaefer is a frequent lecturer on patent and licensing topics all over the world. He has a specific expertise on a company’s patent strategy vis-à-vis competitors, involving patent enforcement actions in US and foreign courts and patent validity challenges in the US and foreign patent offices, and has lectured on strategy topics in that area on several occasions. He has also lectured on topics related to patent licensing matters, and has specific expertise related to clinical support agreements for the testing and development of medical devices.

Although Mr. Schaefer represents some large companies, he also enjoys working with start-up companies in the medical device area. Mr. Schaefer also serves on the Board of Directors for Noxilizer, Inc., a Baltimore, MD start-up medical device company developing a new low-temperature sterilization technology.

Mr. Schaefer joined Fish & Richardson P.C. in 1995, following a federal appellate clerkship for the Honorable Alvin A. Schall of the Court of Appeals for the Federal Circuit in Washington, D.C. (namely, the U.S. federal appellate court with exclusive jurisdiction over appeals in patent cases). Mr. Schaefer also worked for the intellectual property law firm of Pennie & Edmonds in New York, NY (1992-1993), and was a Lieutenant in the United States Air Force (1985-1989) before attending law school.

ADMISSIONS

  • United States Patent and Trademark Office 1994
  • Minnesota 1995
  • United States District Court for the District of Minnesota 1995
  • United States Court of Appeals for the Federal Circuit 1994
Clerkships
  • The Honorable Alvin A. Schall, United States Court of Appeals for the Federal Circuit, 1993 – 1995
Memberships and Affiliations
  • Judicial Clerk to the Honorable Alvin A. Schall, United States Court of Appeals for the Federal Circuit, 1993-95.
  • Active in various bar organizations, including the American Intellectual Property Law Association (AIPLA), serving on the Board of Directors for the Minnesota Intellectual Property Law Association (MIPLA), and on the Board of Governors for the Minnesota Bar Association.
  • Co-founder in 1997 and board member for the Minneapolis NEXT charitable foundation, which provides scholarships for deserving youngsters in the Twin Cities. Currently Minneapolis NEXT has 40 students on scholarship in Twin Cities schools.
  • Lieutenant in the United States Air Force, Wright-Patterson Air Force Base, Ohio, 1985-89, and worked in areas of aviation electronics (“avionics”), avionics data buses (optical and wired), modular avionics architectures, fiber optic systems, and the very high speed integrated circuits (“VHSIC”) program.

OTHER DISTINCTIONS

Selected Speeches and Publications
  • “Intellectual property due diligence: getting the most for your budget,” MedTech Business Review, Autumn/Winter 2007
  • “The First Inventor Defense Act: A Product of ‘Eleventh Hour Amendment,’” MIPLA CLE Proceedings (Feb. 8, 2000)
  • “Envirotech Corp. v. Westech Engineering, Inc.: The On-Sale Bar to Patentability and Executory Sales Offers,” 75 Minn. L. Rev. 1505 (1992).
Government Service
  • Lieutenant, U.S. Air Force 1985 – 1989
Education
  • BS, University of Kentucky 1985
    Electrical Engineering
    with distinction, Tau Beta Pi, Eta Kappa Nu
  • MS, University of Dayton 1995
    Engineering Management
  • JD, University of Minnesota Law School 1992
    cum laude
  • Law Review Board of Editors

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