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Minneapolis Law Firm

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Christopher R. Hilberg

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Overview

  • Member of Oppenheimer’s Patent Group who focuses his practice on intellectual property strategy and counseling 

  • Former software designer/developer with practical perspective on drafting, prosecuting, and analyzing patents protecting software, networking, Internet, consumer electronics, computer-implemented business methods, and hardware and storage media technologies

  • Assists clients with securing patent protection before the U.S. Patent & Trademark Office including extensive practice before the Board of Patent Appeals and Interferences

  • Extensive experience with validity, infringement, and freedom to operate analyses, digital rights management and other software/hardware-related copyright and trade secret protection counseling and open source software risk management planning

 

Representative Experience

  • Management of 400+ patent portfolio for Fortune Global 500 client
  • Representation of clients to protect computer-implemented systems, hardware, networks, and other IT-related solutions in gaming, health care, financial services, and computer data storage industries
  • Negotiation of agreements with intellectual property issues in mergers and acquisitions, security interests in intellectual property, license-in and license-out of intellectual property rights, and other technology transfers
  • Responsible for 70+ patent applications filed under USPTO’s new Accelerated Examination Procedures in 2008
Education

University of Chicago Law School  »  J.D.

Carleton College  »  B.A.  »  Physics  »  cum laude  
Areas of Practice
Recognition

Minnesota Law & Politics  »  “Rising Star”

Associations & Pro Bono

American Bar Association  »  Section of Intellectual Property Law  »  Patent System Policy Planning  »  Special Committee on Computer Gaming

American Intellectual Property Law Association  »  Electronic and Computer Law Committee  »  Licensing and Management of IP Assets Committee

Minnesota State Bar Association  »  Computer & Technology Law Section  »  former chair

Minnesota Intellectual Property Law Association  »  Patent Prosecution Committee  » Software Protection Committee

Children’s Law Center of Minnesota
Publications

“Accelerated Examination: A Second Look, Reconsidering the Benefits of the USPTO’s New Accelerated Examination Program,” Landslide, ABA Section of Intellectual Property Law, Vol. 2 No. 4, March/April, 2010.

“How to Balance User Utility and Commercial Revenues in the World of Hyperlinks and Trademarks”, AIPPI Journal, Vol. 49, No. 12, 2004.

“How Much is That Hyperlink in the Window?,” Advertising Compliance Service, Volume XXIV, Issue 22, Bulletin #558, (Special Report #5), 2004.

“Will It Get Quieter in Cyberspace? Trespass on the Internet,” The Computer & Internet Lawyer, Vol. 21, No. 1, 2004.

“Trademarks and Hyperlinks: A Policy Analysis,” The Computer & Internet Lawyer, Vol. 19, Nos. 6-7, 2002.

Speaking Engagements

“Bilski – Finally!!! A Recap of the Supreme Court’s Decision in Bilski v. Kappos and What It Means for the Future of Software-Related and E-Commerce Patents,” MSBA Computer & Technology Law Section, 2010.

“Understanding Your Third-Party Software Service Agreements: Ownership of Data & Proprietary Rights, Liability & Insurability Considerations,” Oppenheimer Wolff & Donnelly LLP Privacy & Data Protection Seminar Series.

“Creating, Perfecting, and Enforcing Security Interests in Intellectual Property,” Minnesota CLE Webcast Seminar, 2010.

“Digital Copyright: Damages, Fair Use, DRM and Other Quandaries,” MSBA Art & Entertainment Law Section Presents, 2010

“When, Why, and How to Strategically Leverage Accelerated Examination,” CPA Global Seminar, Patent Management: Generating Return, Managing Costs and Ensuring Quality, New York, 2009

“Business Law Series: What Every Business Lawyer Needs to Know about Intellectual Property,” Minnesota CLE Webcast Seminar, 2009
“The Year in Review: Top 10 Computer and Tech Law Developments for 2009,” Minnesota CLE, MSBA Computer & Technology Law Institute, 2009

“Practical Tips for Protecting Computer-Implemented Inventions under Bilski and Section 101,” Minnesota CLE Webcast Seminar, 2009.

“Is Copyright Law in Need of a Digital Makeover?”, MSBA Computer & Technology Law Section, 2009

“Reconsidering Accelerated Examinations: Five Lessons Learned Since the Launch of the AE Program”, CPA Global, 2009

“Bilski & Beyond: The Future of Business Method Patents”, Iowa Intellectual Property Law Association Annual Meeting, 2008

“Update and Outlook on Business Method Patents”, Minnesota CLE, Midwest Intellectual Property Institute, 2008

“Changes To the Rules of Practice for Patent Appeals and IDS Filings”, Minnesota CLE, Advanced Patent Prosecution, 2008

“2007 Computer & Technology Law Institute”, Minnesota CLE, Institute Chair

“Open Source Software in Licensing Agreements”, Minnesota CLE, Hot Topics in IP Licensing, 2006

“Introduction to Open-Source Software Licensing Issues”, Minnesota CLE Webcast Seminar, 2006

“Counseling Software Developers on Open Source Practices and Policies”, Minnesota CLE, Midwest Intellectual Property Institute, 2005

“The New Wildcard in IP Diligence: Open Source Software”, Minnesota CLE, Intellectual Property in Complex Corporate Transactions, 2005

“An Update on the Wild West: Anarchy on the Internet and the Bounds of Legality”, Minnesota CLE, MSBA Computer Law Institute, 2003