Nate Rees (US)

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Nate Rees joined Norton Rose Fulbright in 2007 and focuses his practice on intellectual property matters. He has experience in obtaining and enforcing patents in the areas of telecommunications, electronics, computer hardware and software, biomedical devices, computer networking and a variety of mechanical arts.

Nate is registered to practice in front of the US Patent and Trademark Office. His patent prosecution experience includes drafting patent applications and responding to office actions from the US Patent Office as well as from foreign patent offices. He has also guided numerous patent applications through the administrative appeals process.  Nate’s intellectual property experience also includes assisting clients with licensing their technology and with due diligence reviews related to intellectual property.

Nate is the co-chair of the firm’s Post-Issuance USPTO Practice Group and is extensively involved in both invalidating and defending patents which have been drawn into post issuance USPTO proceedings.  This experience has included arguing inter partes cases in front of the Patent Trial and Appeal Board.  As many of these cases have been involved in litigation while the USPTO proceeding is pending, Nate has crafted and executed strategies which address various issues that arise from having these cases in parallel.

Prior to attending law school, Nate worked at an engineering firm and conducted masters research, where he primarily focused his attention on the development and improvement of various medical imaging devices. Representative devices include CT, MRI, ultrasound, SQUID’s (magnetoencephalography) and novel handheld RF imaging devices. During this time, Nate gained practical experience working within the many facets of the electrical arts including electromagnetic propagation, signal processing, digital/analog circuit design, antenna design and control system design.

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PTAB discourages delayed challenges to identification of real-parties-in-interest

In Sony Computer Entertainment America LLC, v. Game Controller Technology LLC, the PTAB was faced with a situation where a patent owner waited until a few weeks before an IPR proceeding was scheduled to end to challenge the petition’s identification of real-parties-in-interest (RPIs) under 35 U.S.C. § 312(a)(2), despite having all relevant information long before … Continue reading

IPR Petition denied for failure to prove up amusement park brochure as printed publication

In A.R.M. Inc. v. Cottingham Agencies LTD., the Patent Trail and Appeal Board (PTAB) declined to institute an Inter Partes Review (IPR) because each of the asserted rejections relied on a reference that was not adequately proven to be a printed publication. IPR2014-00671, Paper 10 (October 3, 2014). U.S. Pat. 7,666,103 is directed to an “Amusement Ride” which allows … Continue reading