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John B. Pegram

Senior Principal

New York, NY
212-641-2230
pegram@fr.com
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Background

John B. Pegram is a Senior Principal based in Fish & Richardson’s New York office. He specializes in intellectual property litigation, licensing, opinion and counseling matters of all types. Pegram has successfully litigated cases in state and federal courts, and before the U.S. International Trade Commission in Washington, D.C. He also is registered to practice in patent matters before the U.S. Patent and Trademark Office.

John is a member of Fish’s Europe and Japan teams, helping U.S. clients with IP issues in those jurisdictions, and representing foreign clients in U.S. IP matters. For over 20 years, he has met regularly with officials of the European and Japanese Patent Offices and IP courts, as well as IP association leaders in those jurisdictions.

Representative technical subjects of matters that John has handled include: antibiotics; automobile components and systems; bar code reading and processing; cameras and lens systems; cathode ray tubes; centrifuges; coin and material testing; computer disk drives and controllers; computer logic; data compression; diagnostic kits; DNA polymerases; electronic displays and display systems; enzymes; fabric and fiber technologies; fiber optics; filtration systems; footwear; impact printers; inkjet printers; lighting devices; magnetic and optical recording; medical implants and instruments; microprocessor control systems; optical disc technology; orthopedic devices; packaging; photoconductive printers; photocopiers; pollution control systems; PTFE products; pumps; semiconductor devices and manufacturing; television broadcasting & receiving equipment; thyristors; and vending machines and systems.

Education

LL.B., New York University School of Law 1965


B.A., Columbia University 1960
Physics

Memberships & Affiliations

​John is active as a bar association leader, including Past President of the New York IP Law Association (NYIPLA), a past Director of the American Intellectual Property Law Association (AIPLA), and former Editor-in-Chief of The Trademark Reporter. He is currently AIPLA delegate to the US Bar - EPO Liason Council and NYIPLA delegate to the US Bar - JPO Liason Council, and has served as an advocate, arbitrator, or mediator in intellectual property and business arbitrations and mediations, and as an expert witness on patent procedures.

Other Distinctions

Recognized as a 2013 Top Rated – AV® PreeminentTM Lawyers in Intellectual Property Law and a 2013-2016 "IP Star" by Managing Intellectual Property.

Listed in Euromoney Guides to Leading Patent & Trademark Experts; Marquis Who’s Who in America; Who’s Who in American Law; Who’s Who in the East; and Who’sWhoLegal: The International Who’s Who of Business Lawyers.

Recipient of the President’s Outstanding Service Award from the American Intellectual Property Law Association (AIPLA) for 2011. The award recognizes John’s years of service to AIPLA as a member and committee leader.

Publications
John is a frequent author and lecturer on patent, trademark, and federal court practice topics. He was a co-author of Fish’s Patent Reform Updates, tracing the activity that led to the America Invents Act (AIA). Currently, he has written and periodically updates Fish’s EU Unitary Patent & Unified Patent Court webpages.

"Patent owners should not fear the Unified Patent Court," World Intellectual Property Review, January 2016.

"U.S. ​Bar – JPO Liaison Council Meets with JPO," NYIPLA Bulletin, August-September, 2014. Co-author Raymond E. Farrell.

"From the US, progress towards creating Europe’s new unified patent system is looking good," IAM Blog, August 14, 2014.

"Limiting Choice of Venue in Patent Litigation," IP Law360, July 28, 2014. Co-author, Summer Law Clerk Noorossadat "Noori" Torabi.

"The future of attorneys’ fee awards in patent cases," Fish Lit. Blog & AIPLA Newsstand (Lexology), July 11 2014. Co-author, Summer Law Clerk Krystina Ho.

"An equivalent to amendments during IPR proceedings," Fish Lit. Blog & AIPLA Newsstand (Lexology), May 22 2014.

"The question of specificity in patent pleadings heats up," Fish Lit. Blog & AIPLA Newsstand (Lexology), March 25 2014.

"Adjusting the life of a US patent due to Patent Office delay," Cherylyn Esoy Mizzo, Jack Brennan, John B. Pegram, Industrial Biotechnology (February 2010), 6(1): 18-21.

Speaking Engagements

"Patent Litigation in the United States," Japan Intellectual Property Association Seminar, Tokyo, November 25, 2016. 

"U.S. Supreme Court Patent Decisions," U.S. Bar-EPO Liaison Council, New York, September 15, 2016. 

"Brexit and Intellectual Property Issues," IPO European Practice Committe, IPO Annual Meeting, New York, September 11, 2016. 

"The New Reality in Patent Invalidation Procedures – Developments in Post-Grant Review," IPO European Practice Committee Conference, Brussels, May 7, 2014.

Panelist, "Comparison of the New Inter Partes Review at the USPTO and Oppositions at the EPO," Fordham International IP Conference, April 25, 2014.

"Evolving Standards for Disclosing and Claiming Inventions or What Can a Patentee Claim and What Does a Claim Mean?" Fordham International IP Conference, April 24, 2014.

"Update on Inter Partes Disputes and the PTAB," AIPLA Japan Committee seminar for Japan Patent Attorney Association, Tokyo, April 8, 2014, and Osaka, April 10, 2014.

Author & Participant, "Mock Program – PTAB Inter Partes Proceeding Including a Hearing," AIPLA Japan Committee seminar for Japan Patent Attorney Association, Tokyo, April 8, 2014, and Osaka, April 10, 2014.

"Current trends/effects of AIA on US patent practice," AIPLA Europe Committee meeting with CNCPI (Compagnie Nationale Conseils Propriété Industrielle), Paris, March 11, 2014. With another speaker.

"Counseling Clients re New USPTO Post Grant Proceedings and Interplay with Litigation," AIPLA Europe Committee meetings with Chartered Inst. of Patent Attorneys, London, March 10, 2014, and with German Patent Attorneys Ass’n, Munich, March 12, 2014, and with European Patent Institute, Munich, March 13, 2014.

"Unitary Patent and Unified Patent Court," Japan Patent Attorney Ass’n seminars in Osaka and Tokyo, November 27 & 29, 2013. With Dr. Margot Fröhlinger (EPO) and Jan-Malte Schley (Munich).

"Patent Courts – The US System: What Can Be Done to Address Litigation Inefficiencies?" AIPLA Annual Meeting, October 25, 2013. With Federal Circuit Chief Judge Randall R. Rader.

"EU Unified Patent Court," joint meeting of the Giles Rich and Pauline Newman Inns of Court, Washington, DC, October 23, 2013.

"Report on US law – Written description requirements," US Bar – EPO Liaison Council, Munich, October 10, 2013.

"Global Harmonization in Patent Law," IPO European Practice Committee Conference, Brussels, May 27, 2013.

"Comparing Patent Enforcement Across Multiple Foreign Jurisdictions," NYIPLA Annual Meeting workshop, May 21, 2013.

Panelist, "Recent Developments in U.S. Patent Law" and "Administrative & Substantive Patent Office Harmonization," Fordham International IP Conference, New York, April 4-5, 2013.

"Interplay between Litigation and the AIA," AIPLA Europe Committee meetings with the Chartered Institute of Patent Attorneys (London), IP Lawyers Association (London), and the European Patent Institute (Munich), March 11-14, 2013.

"European Unitary Patent and Unified Patent Court, West LegalEdcenter Webinar, February 12, 2013. With Frank Peterreins (Munich).

"European Unitary Patent: An Update," IPO Chat Channel Webinar, January 10, 2013. With Dr. Margot Fröhlinger (EPO) and another speaker.

Experience

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