Randall B. Bateman
Salt Lake City
Randall (Rand) Bateman is a registered patent attorney who specializes in the protection of intellectual property. Rand’s experience includes complex intellectual property litigation, as well as prosecution of patent, trademark, and copyright matters. He represents local, regional, national, and international clients. Two particular strengths of Rand’s practice involve patents on medical devices and shooting range/target technologies. Rand also has extensive experience in trademark disputes, both in Federal Court and before the United States Patent and Trademark Office.
To date, Rand has obtained approximately 400 patents and administered the registration of more than 400 trademarks. He has also litigated numerous patent, trademark, copyright, and trade secret matters ranging from simple architectural copyright cases to patent cases involving in excess of 100 claims. His successful efforts have ranged from seven-figure dollar settlements on behalf of his clients, to the invalidation of over 100 patent claims spanning four patents on summary judgment and affirmed unanimously on appeal.
Rand is frequently called on to speak to legal and business groups regarding intellectual property issues and has published numerous articles regarding Intellectual Property issues in business.
Rand is also the founder of the Utah Genius awards that honors the top patentees and trademark registrants in Utah.
Rand has been listed in Best Lawyers in America and Mountain States Super Lawyers for 11 consecutive years. He has been identified by Super Lawyers as one of the top 100 attorneys in the Intermountain West, and was awarded Lawyer of the Year in Information Technology Law in 2016 by Best Lawyers.
University of Utah, S.J. Quinney College of Law, J.D. 1993
- Order of the Coif
- 1st Place Roger J. Traynor Moot Court Competition
- University of Utah National Moot Court Team
- Note and Comment Editor, Journal of Contemporary Law.
- Leary Scholar
Weber State College, B.I.S. (Chemistry, Zoology, Anthropology) 1988
- Cum Laude
- Student Senator
- Debate Team
- Founder Delta Theta Zi Fraternity (Now Sigma Alpha Epsilon)
- Finalist, Man of the Year, 1988
- American Intellectual Property Association (AIPLA)
- Federal Bar Association
- Founder Utah Genius
- Center for Law and Biomedical Sciences, University of Utah, Advisory Board 2016-Present
- Central Utah Bar Association – President 2014-2015, Vice President 2013-2014
- Utah State Bar Association – Chair, Intellectual Property Section 1997-1998. Chair, Cyberlaw Section, 2006-2007
- Board Member, Utah State Bar Leadership Academy, 2016-Present
Honors and Awards
- Named 2016’s “Lawyer of the Year” for Salt Lake City, Information Technology Law, by Best Lawyers in America®
- Rated Superb with a ‘10’ ranking on AVVO, National Attorney Ranking Service
- Recognized in Forty Under 40: Utah’s Rising Stars by Utah Business Magazine
- Listed as Best Lawyer by Best Lawyers in America® ten consecutive years
- Recognized as Utah Legal Elite, Intellectual Property, by Utah Business Magazine
- Recognized as Super Lawyer, Top 100 and Intellectual Property, by Super Lawyers Magazine
- Recognized as a Utah Super Lawyer by Super Lawyer Magazine ten consecutive years
- Author, My view: Celebrate World IP Day, Deseret News, April 2016
- Author, All About Patent Searchs, March 2016
- Author, Copyright Law 101, Business Connect magazine, October 2015
- Co-Author, Pleading Patent Ineligibility, Lexology, 2015
- Co-Author, Collateral Estoppel of TTAB Ruling and the Race to the Courthouse, Lexology, April 2015
- Speaker, New Lawyer CLE, Utah State Bar, What Everyone Should Know About Copyrights, 2015
- Speaker, New Lawyer CLE, Utah State Bar, What Everyone Should Know About Patents, 2015
- Speaker, New Lawyer CLE, Utah State Bar, What Everyone Should Know About Trademarks, 2015
- Author, The Inventor’s Dilemma: New Patent Laws a Trap for the Unwary – Utah Business, 2014
- Co-Author, Forum Shopping in Copyright Cases, Intellectual Property Law Today, March 2014
- Speaker, Utah County Chamber of Commerce, Navigating the World of Intellectual Property, 2013
- Speaker, Association for Talent Development, Copyright Law for Trainers, 2011
- Speaker, Utah Valley Women’s Business Network, The Enormous Power and Importance of Intellectual Property Protection, 2011
- Small company sued for trademark, trade dress and copyright infringement. The clients of the small company which made promotional kits for distributors in the essential oils industry were threatened with being sued if they sold the company’s kits. Shortly thereafter, the small company was sued for trademark infringement, trade dress infringement and copyright infringement. In response to the Complaint, We filed a motion to dismiss or, in the alternative, for summary judgement arguing that the Plaintiff had no legal rights in the trademark and that the company’s kits did not infringe any trade dress or copyrights owned by the Plaintiff. The Court agreed and dismissed the lawsuit with prejudice.
- Manufacturer sued for patent infringement. The manufacturer of electronics equipment was sued for patent infringement on a medical method patent. We filed a motion to dismiss on the basis that the facts alleged by the plaintiff proved that our client could not have infringed the patent because a third party must have performed key parts of the method, thereby preventing liability for our client. The Court agreed and granted a dismissal with prejudice.
- Software company filed action to stop competitor threatening patent infringement. The owner of a small software company filed a declaratory judgment action to stop a competitor from threatening his clients with patent infringement by use of the company’s software. After an unsuccessful mediation, we filed a motion for summary judgment that 4 of the patents claimed ineligible subject matter. The court agreed, resulting in all 118 claims in the patents being held invalid. The ruling was unanimously affirmed on appeal.
- Inventor was informed by prior patent attorney that his invention was unpatentable because of the prior art. An inventor brought us a patent application which had been filed by another firm. The prior patent attorney told him that the invention was unpatentable because of the prior art found by the Examiner. After reviewing the office action, we rewrote the application to comply with Patent and Trademark Office guidelines and convinced the Examiner to grant two patents for the technology disclosed in the original application.
- Small online retailer threatened by competitor regarding trademark registration. A small online retailer was threatened by a competitor who had obtained a trademark registration for a phrase commonly used to describe the products being sold. The trademark owner had threatened several other competing companies. We filed a cancellation proceeding and obtained summary judgment cancelling the trademark registration.
- Obtained 28 patents for electro-surgery technology. A start-up company approached us about representing them regarding new electro-surgery technology. Carefully analyzing and distinguishing the crowded field of prior art, we have obtained twenty-eight issued U.S. patents and have multiple U.S and foreign applications still pending.
- Misuse of company’s trademark. Our client was struggling with numerous competitors using their company’s marks in Internet tag lines in order to steer business toward their products. Many of the competitors claimed that the marks were descriptive. By pursuing cases against several competitors, the misuse of the client’s mark has become rare.