Fulbright & Jaworski L.L.P.
- Intellectual Property and Technology
- Patent Prosecution and Litigation
Mark Wilson is a partner in the Austin office of Fulbright & Jaworski L.L.P., where his practice focuses on all aspects of patent prosecution and enforcement.
Mark's docket is split among patent counseling, patent prosecution, and patent litigation matters, with an emphasis in biotechnology related matters. Mr. Wilson has significant experience in the areas of genetic engineering, gene therapy, molecular biotechnology assays, chemotherapy, drug screening and targeting, animal and plant breeding programs, biomass production, renewable energy, clean energy technologies, organic chemistry, pharmaceutical development, and medical devices.
Mark counsels clients regarding intellectual property portfolio development, management, and commercialization on a global scale. He is experienced in technology transfer, including both licensing and company formation and funding. Mr. Wilson drafts and reviews licensing, confidentiality, and material transfer agreements. He also prepares pre-litigation, infringement, validity, patentability, and freedom-to-operate opinions and provides due diligence review of intellectual property to companies and investors.
Mark's patent prosecution practice includes all aspects of drafting and prosecuting patent applications before the United States Patent and Trademark Office. He also supervises the prosecution of patent applications before many foreign patent offices. In addition, Mr. Wilson is experienced in appeal and interference practice before the Board of Patent Appeals and Interferences.
Mark's litigation experience includes all phases of discovery and trial in federal district courts, including investigation and formulation of litigation strategy, motion practice, depositions, preparation and examination of witnesses, trials, and evidentiary hearings. He has experience in briefing and the development of appellate strategy before the Court of Appeals for the Federal Circuit.
Mark is involved in a wide variety of professional activities. Currently, he is the Assistant Reporter General of the CET of FICPI (Fédération Internationale des Conseils en Propriété Industrielle). Mark is a frequent presenter at FICPI events and participant in FICPI delegations, visiting government IP offices around the world.
- Strategic development and management of global IP portfolios for small, medium, and large companies
- Developing strategies and process of IP review and clearance during product development for small, medium, and large companies
- Lead counsel drafting and prosecuting patent applications on core technology for multiple biotechnology and medical device companies
- Lead counsel drafting and prosecuting patent applications in area of biotechnology and medical devices for universities and companies
- Lead counsel on successful appeals before Board of Patent Appeals and Interferences
- Lead United States counsel for patent owner in defending against opposed European patent
- Co-counsel in patent litigation matter involving transgenic plants
- Co-counsel in patent litigation matter involving liposomal pharmaceuticals
- Co-counsel in pre-filing investigation for patent infringement action against generic manufacturer in paragraph IV ANDA certification cases.
- Lead counsel in patent interference matter involving screening assays in which client prevailed and ultimately sold its patent to the other party for a very favorable price.
- Lead and Co-counsel on due diligence for prospective buyers in areas of biotechnology and medical devices
- United States Patent and Trademark Office
- American Bar Association
- State Bar of Texas
- Travis County Bar Association
- American Intellectual Property Law Association
- Austin Intellectual Property Law Association
- Fédération Internationale des Conseils en Propriété Industrielle (FICPI)
- Intellectual Property Owners Association (IPO)
- Association of University Technology Managers (AUTM)
- University of Texas School of Law, Adjunct Professor of patent prosecution
- Co-author with Daniel Alge, “Information Paper regarding the Bayh–Dole Act for the Council of the European Union,” October 2007
- Co-author with Daniel Alge, "Patent Opposition Considerations for the Technology Transfer Professional," INDUSTRY & Higher Education, Vol. 21, No. 2, April 2007
- Co-author with Daniel Alge, "Patent Opposition Considerations for the Technology Transfer Professional," Journal of the Association of University Technology Managers, Vol. XVIII, No. 1, Summer 2006
- "Contexts of US Patent Evaluation and Prosecution," US Department of State, International Trade Administration Special American Business Internship Training (SABIT) Group Program on Intellectual Property Rights, Austin, Texas, May 2010
- "Business: Intellectual Property," 2010 InnoTech Emerging Medical Technology Symposium, San Antonio, Texas, March 2010
- “Patentability of New Medical Uses in the United States,” 2009 FICPI Symposium, Delhi, India, December 2009
- “Patentability of Salicylic Acid Derivative – Perspective from the United States,” 2009 FICPI Symposium, Delhi, India, December 2009
- “Perspectives on United States Patent Prosecution and Procedures,” Presented to IP India Delhi Division, Delhi, India, December 2009
- “The US Bayh-Dole Act at ~30: Lessons from the Past and Implications for the Future of Tech Transfer,” 2008 FICPI Open Forum, Florence, Italy, October 2008
- “The Impact of US Patent Practice on Patent Quality,” 2007 FICPI Open Forum, Sevilla, Spain, November 2007
- “Beginning and Advanced Topics of Current Interest in Patent Law,” 2007 AUTM Annual Meeting San Francisco, March 2007.
- “Non-U.S. Patent Prosecution from the Experts,” 2006 AUTM National Meeting, Orlando, Florida, March 2006
- “Staffing the IP Practice,” 2005 FICPI Open Forum, Lisbon, Portugal, November 2005
- “Patents 101 – Domestic Patent Prosecution,” 2005 AUTM Central Regional Meeting, Detroit, Michigan, July 2005
- “Non-U.S. Patent Prosecution from the Experts,” 2004 AUTM Central Regional Meeting, Chicago, Illinois, August 2004
1992 - J.D., with honors, The University of Texas School of Law
1989 - M.A., Molecular Biology, The University of Texas
1986 - B.A., Biology, Texas A&M University
Mark has been inducted into the Phi Kappa Phi, Phi Delta Phi, and Order of the Coif honor societies.




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