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Pam K. Jacobson

Partner
+1.206.370.7605
Fax +1.206.623.7022

Pam Kohli Jacobson is a registered patent attorney and a firm-wide co-chair of the Intellectual Property Practice Group. She concentrates her practice in intellectual property law including litigation, prosecution, licensing, due diligence, portfolio management, and counseling, with an emphasis on the intellectual property of government entities.

Ms. Jacobson has extensive experience litigating patent and trademark disputes as lead counsel throughout the United States. She has handled intellectual property matters from application to the Trademark Trial and Appeal Board, Patent Trial and Appeal Board, Federal Circuit, and the Ninth Circuit. Ms. Jacobson draws upon her broad experience before these tribunals and the ITC to formulate coordinated strategies for efficient, effective results.

She also has an extensive patent and trademark prosecution practice. She manages the patent and trademark portfolios for a wide range of clients, ranging from individual inventors to Fortune 500 companies.

In addition, Ms. Jacobson has assisted a wide range of clients with their technology transactions including various agreements and in the development of institutional patent, trademark, trade secret and litigation policies.

Ms. Jacobson’s technical background and work experience is in applied mathematics, chemistry and molecular biology. Prior to law school, she designed computer models to assess the toxicity of chemical compounds at Honeywell International f/k/a Allied Signal. She also assessed the prevalence of certain gene markers in familial lupus erythematosus during her time as a research scientist the University of Chicago.

Ms. Jacobson has been recognized by industry publications as a leading practitioner in intellectual property law. She currently teaches at the University of Washington School of Law and at its Center for Advanced Study & Research on Intellectual Property.

Professional Background

Prior to joining K&L Gates, Ms. Jacobson was a partner at a boutique intellectual property firm in Seattle and a Seattle general practice firm where she led its intellectual property group.

Achievements

  • Selected to Washington Super Lawyers list (2014-2016)
  • Top Washington Women Attorneys Intellectual Property (2014-2016)
  • Corporate LiveWire Global Awards--Trade Secret (2016)
  • Selected to Washington Rising Stars list (2008-2010)

Professional/Civic Activities

  • Adjunct Professor, Intellectual Property Law, University of Washington School of Law
  • Member, Intellectual Property and Litigation Sections, Washington State Bar Association
  • Member, King County Bar Association
  • Member, International Trademark Association Public and Media Relations Committee
  • Board Member, Seattle Chapter, Licensing Executives Society (2012-2013)
  • Member, Federal Bar Association
  • Member, Washington State Patent Law Association
  • State Board Member, Co-Vice President, Professional Development (2012-2015) Washington Women Lawyers

Speaking Engagements

  • Presenter, "Sanctions and Attorneys' Fees Post Octane Fitness," AIPLA, March 28, 2016.
  • Presenter, "Intellectual Property and Privacy Litigation," PSAA, February 19, 2016.
  • Presenter, "Trademark Prosecution," Center for Advanced Study & Research on Innovation Policy at the University of Washington, July 20, 2015.
  • Presenter, "Tackling Local Patent Rules," LaWorld, Washington D.C., April 30, 2015.
  • Presenter, "Intellectual Property Litigation: Avoiding Common Pitfalls," Harmonie Seminar, Denver, Colorado, October 8, 2015.
  • Moderator, "Examining the Ethics of Attorney Communications" with Chief Judge Marsha Pechman of the Western District of Washington, Jeanne Marie Clavere, WSBA’s Professional Responsibility Counsel; Lucinda Fernald, General Counsel for Garvey Schubert Barer; and, Michele Storms, Assistant Dean and Executive Director for University of Washington School of Law, October 11, 2013.
  • Presenter, "Emerging Issues in US Patent Law," LAWorld Conference, Boston, October 5, 2013.
  • Presenter, “Trademark Priority, USPTO Practice and the Madrid System,” University of Washington School of Law, November 2012.
  • Presenter, “Developing and Protecting Your Brand,” NW Entrepreneur Network Intellectual Property Workshop, July 2012.
  • Presenter, “Trademark Enforcement,” Breakfast Briefing at Christensen O’Connor Johnson Kindness, February 2012.
  • Presenter, “Copyright Overview,” Northwest Entrepreneur Network Intellectual Property Workshop, March 16, 2011.

REPRESENTATIVE LITIGATION

  • DMG v. University of Oregon (D. Oregon). Lead counsel for the University of Oregon in a 500 million dollar patent, trademark and copyright dispute. Pending.
  • Global v. The Clarke Group (Whatcom County Superior Court). Lead counsel for the Clarke Group in a Lanham Act and trade secret dispute involving chemical fire retardants. Pending.
  • Sunlight Supply v. Maverick Sun (W.D. WA). Lead counsel for Maverick Sun in a patent, trademark and trade dress action. Octane attorneys’ fees.
  • Stonegard v. 3M Company (King County Superior Court, Washington Court of Appeals). Counsel for 3M Company in trademark infringement action, prevailed at trial. Awarded attorneys’ fees.
  • Experience Hendrix LLC et al. v. The James Marshall Hendrix Foundation (W.D. WA, 9th Cir., and S.Ct.). Counsel for the The James Marshall Hendrix Foundation in 100 million dollar trademark and publicity rights litigation. Awarded attorneys’ fees.
  • Combs v. Commissioner Social Security Administration (D. OR). Pro bono counsel in the appeal of Social Security benefits denial. Awarded attorneys’ fees.
  • National Products, Inc. v. Aqua Box Products (W.D. WA). Lead IP counsel for Aqua Box Products in trademark action.
  • Alliance Packaging, LLC v. Smurfit-Stone Container Corp. (W.D. WA). Counsel for Smurfit-Stone in patent infringement action.
  • Dbest Products v. Staples (C.D. CA). Counsel for Staples in patent infringement action.
  • Majestic Mirrors v. Electric Mirror (S.D. Fl). Represented Electric Mirror in design patent infringement action.
  • Patch Products v. LB Games (W.D. WI). Counsel for LB Games in patent infringement action.
  • Poly America v. Stego Industries, LLC (N.D. TX). Counsel for Stego in trademark infringement action.
  • Bellevue College v. Bellevue University (TTAB). Lead counsel for Bellevue College in TTAB action.
  • Medicis v. Skin Formula (TTAB). Lead counsel for Medicis in TTAB action.
  • Bridgestone v. Federal Corp. (TTAB, Fed. Cir.). Counsel for Federal Corp. in TTAB action and appeal to Federal Circuit.

REPRESENTATIVE PATENTS

  • Systems and Methods for Providing a Clock Signal Using Analog Recursion, U.S. Patent Reg. No. 8525562
  • Multi-Dimensional File System, U.S. Patent Reg. No. 9098516
  • Devices for Quantifying the Passage of Time, U.S. Patent Reg. No. 8379489
  • Clock face, U.S. Patent Reg. No. D703,569
  • Geometric Counting Mechanisms, U.S. Patent Reg. No. 9672191
  • A Waistband For An Article Of Clothing, U.S. Patent Reg. No. D778542

REPRESENTATIVE TRADEMARKS

  • Manage trademark portfolios of client ranging from local start-ups to Fortune 500 companies and international educational institutions
  • Trademark clearance for E3 for the American division of a large Japanese gaming company
  • Management of international trademark and internet disputes of international clothing retailer

REPRESENTATIVE INSTITUTIONAL IP POLICIES

  • Corporate Trade Secret Policy
  • Trademark Use Policies/Guidelines
  • Corporate ESI Protocols
  • Corporate DMCA Protocols (Digital Millennium Copyright Act)
  • Corporate Actual Confusion Protocols
  • Corporate Patent Policies (Invention Disclosure Programs, Patent Award Program etc.)
  • Domain Name and Internet Protcols/Notices