Sean D. Solberg
Email Sean: seansolberg@davisbrownlaw.com
CONCENTRATION
Intellectual Property and Intellectual Property Litigation
Sean Solberg joined the Davis Brown Law Firm in March 2012. As a member of the firm's Intellectual Property Department,
he serves as patent counsel to clients ranging from startups to Fortune
500 companies in a variety of industries, including the medical device,
biotech and agriculture industries. Sean is a registered patent
attorney, able to practice in front of the United States Patent and
Trademark Office.
Sean has experience managing and implementing strategies for both
significant and emerging patent and application portfolios, drafting and
prosecuting patent applications in various technologies, performing due
diligence investigations of intellectual property portfolios in merger
and acquisition deals, evaluating the validity and enforceability of
patents, and advising on infringement issues. He also drafts and
negotiates various technology agreements, including licenses,
assignments, and agreements related to research, collaboration and
consulting.
Sean has counseled a large number of startups, universities, and
venture firms in a wide variety of new or emerging technologies,
addressing any and all IP needs for clients in this space, including
patent prosecution, IP-related agreements, IP-related issues with
respect to product development, overall IP strategy, and any other IP
matters that might arise.
Sean has worked a great deal with clients in the medical device,
biotech, and agriculture industries. He has worked with numerous
technologies in the medical device space, including robotic surgical
tools (such as laparoscopic tools), cardiac rhythm management
technologies, heart assist systems and devices, electronic stethoscope
systems, bone deformity treatment devices, and methods and devices for
reduction of injection pain. In the biotech and agriculture industries,
Sean has worked on multiple technologies, including swine virus
identification and vaccine technologies, crop seed and plant treatments
and related delivery systems, high throughput molecular identification
systems, and animal cloning technologies.
In addition to his work in the areas of patent prosecution, IP
transactions, opinions, and due diligence, Sean has experience in
complex intellectual property litigation, providing support and drafting briefs in conjunction with IP litigators.
PUBLICATIONS, SPEECHES AND SEMINARS
- Intellectual Property Series: A House Divided - The Latest Developments in Joint/Divided Infringement, MN CLE Webcast (December 2010).
- Technology Transfer: Behind the Scenes Stories from the Front Lines (moderator), Faegre & Benson Food, Agriculture & Biofuels 2010 National Conference (July 2010).
- KSR Three Years Later: A Review of Obviousness Case Law Since KSR, MN CLE Webcast (June 2010).
- Optimizing Your Intellectual Property, 3M Seminar Series" University of Minnesota Gary S. Holmes Center for Entrepreneurship (April 2010).
- IP: The Basics of Protecting and Optimizing Your Emerging Company's IP Assets, Idea to IPO... and Beyond 2010" University of California San Francisco/Center for BioEntrepreneurship/Burrill & Company (January 2010).
- Research and Lab Notebook Best Practices, University of South Dakota Panel Discussion (October 2009).
- IP for Startups and Working with Your University Tech Transfer Office, South Dakota Biotech Summit (September 2009).
- Intellectual Property Rights: Nuts, Bolts and Washers of IP for Biotech Companies, Panel Presentation, LifeScience Alley Biotech Shared Interest Group (June 2009).
- KSR: Two Years Later, MN CLE Webcast (May 2009).
- Patent Portfolio Management Strategies and Patent Reform, South Dakota Biotech Summit and Expo (September 2008).
- Opinions and Product Clearance Strategies for In-House Counsel, MN CLE Webcast (August 2008).
- KSR: One Year Later, MN CLE Webcast (April 2008).
- Lock It Down and Lock-Em Out: Maximizing the IP Portfolio for Your Emerging Company, August Technology Awareness Forum, Minnesota Technology (2005).
COMMUNITY
Sean currently serves on the Central Region Planning Committee of the Association of University Technology Managers (AUTM). He has previously served on the board of directors for the Push Institute - a think tank for change that identifies emerging trends shaping our world, and currently serves on the board for the Alley Institute - an affiliate of LifeScience Alley in the Twin Cities that focuses on education, workforce development, and research.
Sean's pro bono work has included participation in the Chrysalis Safety Project, serving as counsel for low-income victims of domestic violence seeking an order for protection or other court-ordered protection.
Memberships
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American Intellectual Property Law Association
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Minnesota Intellectual Property Law Association
Alma Maters
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Grinnell College, 1994
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Iowa State University, 1997
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University of Iowa College of Law, 2000
Bar Admissions
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Iowa, 2013
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Minnesota, 2000
Articles