I consider myself an intellectual property law generalist. My law practice has focused since 1989 on preparation and prosecution of patent and trademark applications, legal opinions concerning patent and trademark infringement, validity, and enforceability, transactional work involving intellectual property, such as software licensing, and occasional advice on copyright matters.
On the patents & technology side of my practice, my experience varies over a wide variety of technologies, including oil & gas exploration and production (with emphasis on offshore technology, horizontal well development, and fracturing), combustion technology, glass and glass fiber production, medical devices, wireless communications, cogeneration, syn-gas, petroleum refining processes, petrochemicals, drilling fluids, drilling platforms, BOPs, coiled tubing and associated downhole tools, marine geophysical data acquisition, acoustic ranging, water treatment equipment and processes, adhesives, elastomers, ionomers, thermosetting and thermoplastic polymeric materials, plastics (polyethylene, PVC, polypropylene, and the like), polymerization catalysts and processes, consumer and commercial cleaning products, abrasives, reflective materials, semiconductors, fiber-optics, cryogenic materials, pulp & paper chemistry, electronic specialty gas purification techniques for semiconductor production, carbon nanotube technology, molecular sieves, heat transfer fluids, fluorinated chemicals, and many others.
Regarding trademarks, I have a considerable trademark docket, and enjoy helping clients choose protectable marks, and avoid problems with third party marks.
I have maintained a private practice since 2003, and previously served as in house counsel to 3M in St. Paul, and Air Liquide in Houston, as an associate with Townsend & Townsend (now Kilpatrick Townsend) in San Francisco, and of counsel with Winstead PC in The Woodlands/Houston. I formerly consulted on chemical patents for the JL Salazar Law Firm.
Prior to my law career, I worked as a process engineer, operations engineer, and inspection engineer for Unocal Corp. (now part of Chevron).
Areas of Practice
- Patents & Trademarks 70%
- Trade Secrets 5%
- Copyrights 5%
- Opinions 5%
- License and Confidentiality Agreements 15%
Certified Legal Specialties
- Patent Practice, US Patent & Trademark Office, Reg. No. 32952, 1987
Bar Admissions
- Texas, 2000
- California, 1989
Education
- Franklin Pierce Law Center, Concord, New Hampshire
- Doctor of Jurisprudence - 1989
- University of Wisconsin-Madison, Madison, Wisconsin
- B.S., Bachelor of Science - 1981
- Honors: With Honors
- Major: Chemical Engineering
Published Works
- "The Medical Device User Fee and Modernization Act of 2002: What it Means for Medical Device Manufacturers and Reprocessors", MX Magazine,, 2003
- "Patent Business Practices of Manufacturers of Brand Name Pharmaceuticals - What's Legal & What's Misleading", Houston Business Journal, 2002
Representative Clients
- Johns Manville (a Berkshire Hathaway company)
- Praxair (a Linde plc company)
- Pointcloud Media (computerized choreography)
- Atlas Planning Solutions (software for project resource planning)
- Frontier Deepwater (movable wellbays for offshore vessels)
- Blade Energy Partners (patents and trademarks for downloadable and non-downloadable software)
- Centrax International
- TRC Services
- Scan Systems Corporation (magnetic pipe scanning)
- Wigen Water Technologies (water purification)
- Ventos Power Plus LLC (wind power)
- AquaPyr LLC
- Fat Ogre Games & Comics
- EPCON Industrial Systems LP
- ezNG Solutions LLC
- Insultherm Inc.
- K & N Service
- Madero Dairy Systems
- TIRELINK LLC
References
- Robert D. Touslee, Patent Counsel, Johns Manville
- Robert Pilko, Counsel, Blade Energy Partners
- Wayne R. Wagner
- Roy B. Shilling, President, Frontier Deepwater
- Phil Von Neida, Senior Counsel – Intellectual Property, Linde North America, Inc.
Classes/Seminars
- Panel Moderator, Inventor/Law Firm Exercise, National Association of Patent Practitioners Annual Meeting, 2017
- “Comments on Patent Agent Privilege and In re Silver”, Atlanta Patent Agents Club, 2017
- “How to Support Relative Claim Terms”, USPTO Dallas Regional Office, 2016
- “Equations of Change – How Patent Law Has Changed, and Will Change in the Future”, American Institute of Chemical Engineers, Spring Meeting, Houston, 2012
- “Team Logos: Historical, Societal, and Legal Evolution”, presented at “A Mirror of Our Culture: Sport and Society in America”, St. Norbert College and the Green Bay Packers, 2012
- "Confidentiality Agreements: Prelude to Licensing", Licensing Executives Society, 1998
- "Global Patent Strategies", Gulf Coast Conference, 2001
- "Protecting Your Intellectual Property", Southwest BioVenture Conference & Symposium, 2002
- "Corporate Securities and Patents: How to Avoid Securities Liability for Misstatements of Patent Coverage", Houston Bar Association, 2003
Honors and Awards
- Elected President, National Association of Patent Practitioners
- Invited Speaker, National Association of Patent Practitioners
- Invited Speaker, Licensing Executives Society, 1998
- Invited Speaker, AMSE Petroleum Division
- Invited Speaker, AIChE
Professional Associations and Memberships
- American Intellectual Property Law Association, Present
- Houston Intellectual Property Law Association, Present
- National Association of Patent Practitioners, President (2015-2017), Member of the Board of Directors since 2012-2018
- Licensing Executives Society, Emeritus Member, Present
- Society of Petroleum Engineers, Present
Past Employment Positions
- 3M Company, Senior Intellectual Property Counsel, 08/1991 to 04/1995
- Air Liquide, Houston, Texas, Intellectual Property Counsel - R&D and Gas Applications, 04/1995 to 09/2001
- Winstead PC, The Woodlands and Houston, Texas, Counsel, 09/2001 to 10/2003
- Townsend & Townsend, San Francisco, California, Associate, 09/1989 to 08/1991
Ancillary Businesses
- Consulting on chemical patent matters
Languages
- English
- French
- German
- Spanish
