Paul Oestreich

I am a partner-level attorney with 20 years experience in all facets of intellectual property law. My firm, Eminent IP, is unique in its approach to client relationships and cost-appealing fee structure that provides expert legal advice to business owners and their technical staff. Our lean overhead translates into extraordinary cost savings for the same high-quality work product that you would expect from the top firms in the country. If you need patent protection, domestically or internationally, we have the expertise to protect your inventions. Our expertise also includes trademark, copyright and related licensing and litigation. Please visit the Eminent IP Website for more information and email address where it is best to reach me directly.

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Utah

Since 1998

10th Circuit

Since 2007

Federal Circuit

Since 1999

President

Eminent IP, P.C.

2011 - Current

I advise a diverse range of clients on all aspects of intellectual property including acquisition and enforcement of patents, trademarks and copyrights. The majority of my current practice focuses on the preparation and prosecution of patent applications, domestically and internationally. I prepare and prosecute patents falling within a broad range of technologies including snowmaking nozzles and guns, composite gel matrix padding, electronics, electronics packaging, digital memory devices, antennas, concrete forms systems, medical devices, monorails and carriage traction vehicles, cosmetic devices, consumer products packaging and bicycle components. I also have a substantial trademark practice, primarily the registration of US trademarks. I routinely provide legal opinions on infringement, validity, novelty, product clearance and trademark availability. I have significant experience initiating and responding to pre-litigation activities leading to license agreements or settlements. I regularly advise clients on how to leverage intellectual property portfolios and administer patent portfolios and licensing programs.

Partner

Morriss O'Bryant Compagni, P.C.

2003 - 2011

I advised a diverse range of clients on all aspects of intellectual property including acquisition and enforcement of patents, trademarks, copyrights and trade secrets. My practice was a blend of litigation and preparation and prosecution of patent applications, domestically and internationally. I prepared and prosecuted patents falling within a broad range of technologies including electronics, electronics packaging, digital memory devices, solid state vacuum devices, computed tomography systems, pulse oximeters, concrete forms systems, business methods, fluid analysis systems, monorail people movers, GPS-based tracking and location systems, consumer products packaging and bicycle components. I routinely provided legal opinions on infringement, validity, novelty and product clearance. I initiated and responded to pre-litigation activities leading to license agreements and/or settlements. I litigated patent and trademark infringement issues in federal district court (Utah) including some limited appellate advocacy (10th Circuit). I also regularly advised clients on how to leverage intellectual property portfolios and administer patent portfolios and licensing programs. I trained and mentored associates and legal staff assistants as needed.

Associate Partner

Thorpe North & Western, L.L.P.

2002 - 2003

I was the lead patent attorney in the electrical and electronics practice group at TNW. I was hired as a lateral senior associate and was promoted to Associate Partner at the firm as my level of responsibility, and the complexity of the work that I performed, both increased. In this position, I mentored and trained other associates in the electrical and electronic practice group at the firm.

Associate

TraskBritt, P.C.

1998 - 2002

I was senior associate and the lead patent attorney in the electrical and electronics practice group. I was fully trained in the fundamentals of patent preparation and prosecution, trademark prosecution and supported IP litigation under the direction of litigation partners at the firm.

Law Clerk

Trask, Britt & Rossa, P.C.

1997 - 1998

I performed legal research on litigation matters and was trained to draft patent and trademark applications and office action responses under the direction of partners at the firm.

Summer Associate

Limbach & Limbach, LLP

1997 - 1997

I performed legal research on litigation matters and was trained to draft patent applications and office action responses under the direction of partners at the firm.

Law Clerk

Trask, Britt & Rossa, P.C.

1996 - 1997

I performed legal research on litigation matters, technical expertise in interpreting invention disclosures and was mentored in the art of drafting patent applications and responding to office actions under the direction of partners at the firm.

The University of Utah S.J. Quinney College of Law

J.D. (1998) | Law

1996 - 1998

Activities: Law Review, Senior Editor, Journal of Contemporary Law, 1997-98.

University of Utah

M.S. (1994) | Electrical Engineering

1992 - 1994

University of Dayton

M.S. (1989) | Engineering Management

1988 - 1989

University of Utah

B.S. (1987) | Electrical Engineering

1982 - 1987

Park City Bar

Member

2001 - Current

Utah State Bar  # 08249

Member

1998 - Current

IEEE  # 02191757

Senior Member

1984 - Current

Utah Engineers Council

Chair

2005 - 2006