Nicholas Peterka

Associate

1 (612) 339-1863

npeterka@kinney.com

Professional Experience

Nick’s practice focuses primarily on patent law, but he also has experience advising clients on both litigation and transactional matters in all areas of intellectual property law. Nick provides counsel on patentability issues while conducting freedom-to-operate analyses; non-infringement, invalidity, and patentability searches; and drafting and prosecuting patent applications. Through his understanding of clients’ goals and objectives, Nick assists clients in optimizing the value of their innovations and minimizing risk associated with the intellectual property of competitors, both within the United States and abroad. Nick is suited to handle trademark registration and infringement issues, intellectual property licensing, and the protection of trade secrets. Nick uses his experience to develop and implement creative intellectual property strategies to address each client’s unique needs.

Originally from Park River, North Dakota, Nick received his Bachelor of Civil Engineering, summa cum laude, from North Dakota State University and his Juris Doctor, summa cum laude, from William Mitchell College of Law. During law school, Nick acted as an editor of the William Mitchell Law Review, contributed as a staff member to Cybaris® An Intellectual Property Law Review, represented the student body on the Student Bar Association Board of Governors, aided Professor R. Carl Moy as a research assistant, prosecuted patent applications through the William Mitchell Intellectual Property Law Clinic, and interned for Magistrate Judge Franklin L. Noel in United States District Court for the District of Minnesota.

While completing his undergraduate degree, Nick conducted research in the development of novel biomaterials for replacement tissue, such as replacement hips and knees. Because of his research, Nick was selected as a Barry M. Goldwater Scholar, a national award given for undergraduate research. In his spare time, Nick enjoys traveling, reading, rock climbing, running, curling, and skydiving.

Publications

  • Patent Freedom to Operate Searches, Opinions, Techniques, and Studies, (ABA, 2017), co-author
  • Intellectual Property Law for Business Lawyers, Thomson Reuters®, annual (contributing author)
  • Federal Intellectual Property Laws and Regulations, Thomson-Reuters®, annual (editor)
  • Use of Unnatural Amino Acids for Design of Novel Organomodified Clays as Components of Nanocomposite Biomaterials, Philosophical Transactions of the Royal Society (368 PHIL. TRANS. R. SOC. A 1963 (2010))

Blog PostsSee All

■ Nicholas J. Peterka In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. ___, No. 13-854 (2…

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■ Nicholas J. Peterka On November 6, the Federal Trade Commission and MPHJ Technology Investments LL…

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Community Involvement

  • Children’s Law Center of Minnesota, Volunteer Attorney
  • Salvation Army, Volunteer

Representative Matters

  • Prepared, prosecuted, and supervised numerous patent applications, including PCT and foreign counterparts, on a variety of technologies on behalf of multi-national corporations, medium-sized businesses, small businesses, and individual inventors
  • Provided freedom-to-operate analyses and opinions related to non-infringement and invalidity of third party patents by conducting patent clearance studies for billion-dollar product lines and advising clients regarding risk management and patent avoidance strategies
  • Advised clients in optimizing the value of their innovations and minimizing risk associated with the intellectual property of competitors through the use of confidentiality agreements and trade secret laws
  • Worked on a litigation team representing a client in an infringement and invalidity lawsuit in United States District Court for the District of Minnesota