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Fulbright & Jaworski L.L.P.

Mark Garrett, Garrett, Fulbright & Jaworski L.L.P., Fulbright & Jaworski, Fulbright and Jaworski, Fulbright, Intellectual Property Litigation, Patent Prosecution, endovascular medical technology, medical devices, processes, patent litigation, trademark litigation, copyright litigation, Austin, patent
Mark Thomas Garrett - Fulbright & Jaworski LLP
Mark Thomas Garrett
Partner
D: +1 512 536 3031
Austin
98 San Jacinto Boulevard
Suite 1100
Austin, TX 78701-4255
T: +1 512 474 5201
F: +1 512 536 4598
AREAS OF CONCENTRATION
  • Patent Law
EXPERIENCE

Mark's practice focus is in the area of patent law—both litigation and transactional—though he has analyzed and litigated trade secret, trademark and copyright issues.

Mark's extensive patent litigation experience extends from pre-filing investigations through trial. Mark has also handled several false patent marking lawsuits.

His patent prosecution experience includes preparing and prosecuting utility and design patents, and participating in reissues, reexaminations, and interferences. In addition, Mark has experience with patent licenses and settlements, conducting intellectual property due diligence, and performing patentability and freedom-to-operate evaluations.

Mark has advised universities, startups, and established companies about how best to pursue and manage their intellectual property assets.

In the course of his litigation and transactional work, Mark has worked with many different mechanical, electrical, processing, software, and medical device technologies, including medical imaging technology, motor and generator technology, outdoor power equipment, endoscopic technology, injection port technology, intraosseous access device technology, biosensor technology, endovascular technology, microsurgical robotic technology, optical filters, and telecommunications equipment.

Mark started his career at the intellectual property boutique firm of Arnold White & Durkee.

PROFESSIONAL ACTIVITIES and MEMBERSHIPS
  • American Intellectual Property Law Association
  • Austin Intellectual Property Law Association
  • State Bar of Texas
  • Austin Young Lawyers Association
  • Travis County Bar Association
PROFESSIONAL HONORS
  • Best Lawyers in America, Intellectual Property Law (2009 - 2011)
  • "Texas Rising Star," Intellectual Property Litigation, Law & Politics (2007 - 2009, 2011)
PUBLICATIONS
  • Co-author, "Federal Circuit Holds That False Marking Claims Must Be Pled With Particularity," Fulbright Briefing, March 31, 2011
  • Co-author, "Supreme Court Issues Bilski – Business Methods Still Eligible, Federal Circuit to Address Further Business and Biotech Claims," Fulbright Briefing, June 2010
  • Co-author, "Analysis of Today's In re Bilski Decision from the Supreme Court: Its Impact on Patents from Business Methods to Biotechnology," The International Law Firm of Fulbright & Jaworski - Intellectual Property & Technology, June 28, 2010
  • Co-author, "PTO Rescinds Controversial Rules and Pushes for Substantive Rulemaking Authority," Fulbright Alert, October 9, 2009
  • Co-author, "'Matter of First Impression’ – District Court Orders Return of Sunset Royalties Paid for Patent Later Invalidated on Appeal," Fulbright Briefing, December 3, 2008
  • Co-author, "In re Bilski – Machine-Or-Transformation Test Announced for Assessing Processes Under 101, State Street Test Overruled, and Software Left Alone," Fulbright Briefing, November 17, 2008
  • Co-author, "In re Bilski – Machine-Or-Transformation Test Announced for Assessing Processes Under 101, State Street Test Overruled, and Software Left Alone," Fulbright Briefing, November 17, 2008
  • Co-author, "Are Some Method Patents Going Out of Business? The Federal Circuit Sua Sponte Orders En Banc Hearing in In Re Bilski," Intellectual Property Counselor, June 2008
  • Co-author, "Tafas V. Dudas: The PTO Rules Limiting Continuations and Claims Are Null and Void," Fulbright ALERT, April 2, 2008
  • Co-author, "Are Some Method Patents Going Out of Business? The Federal Circuit Sua Sponte Orders En Banc Hearing in In re Bilski," Fulbright Briefing, March 19, 2008
  • Co-author, "PTO Ruling: The Court's Opinion,," IP Law 360, Novemeber 2007
  • Co-author, "District Court Orders PTO to Stand-down on New Rules," Fulbright ALERT, November 1, 2007
  • "Avoiding the Train Wreck: Pre-Filing Considerations in Patent Cases," National CLE Conference, January 4-8, 2005
  • Co-author, "Pre-Filing Considerations in Patent Cases," Competitive Strategies to Build and Protect Your Intellectual Property, June 10, 2004
  • "Avoiding the ‘Train Wreck’: Pre-Filing Inquiries in Patent Cases," The University of Texas School of Law, March 2004
  • "Patent Protection (Ch. 10)," Doing Business in Texas, January 2003
  • "Recent Developments in Trademark Case Law," March 2000
  • "Recent Developments in Trademark Law," 8 Texas Intellectual Property Law Journal 1, Fall 1999
SPEECHES
  • Speaker at "Intellectual Property Leadership Summit & Symposium," Austin Chamber of Commerce event featuring Director Kappos, Austin, Texas, November 22, 2010
  • "Analysis of Today's In re Bilski Decision from the Supreme Court:  Its Impact on Patents from Business Methods to Biotechnology," Fulbright & Jaworski LLP web seminar, June 28, 2010
  • "Patentable Subject Matter:  Bilski and the New PTO Interim Guidance," Strafford Publications, Inc. webinar, October 29, 2009
  • "How to Create and Manage Intellectual Property," Symposium at American Society for Artificial Internal Organs (ASAIO), Dallas, Texas, May 30, 2009
  • "Patent Eligibility After Bilski," Austin Intellectual Property Law Association, Austin, Texas, March 24, 2009
  • "In re Bilski: Where We Are Now with Statutory Processes," Texas Intellectual Property Law Journal's 10th Annual Symposium, Austin, Texas, February 6, 2009
  • "In re Bilski: What Happens Next?" Meeting of Cyberlaw Section of Houston Bar Association, Houston, Texas, January 30, 2009
  • "Fundamentals of Effective Patents," Corporate Executive Board's General Counsel Roundtable teleconference, July 10, 2008
  • "New Rules," 21st Annual Intellectual Property Law Course by TexasBarCLE and cosponsored by the Intellectual Property Law Section of the State Bar of Texas, Austin, Texas, March 6, 2008
  • "Evolving Patent Strategies: Top Ten Questions to Ask When Filing and Prosecuting," Association of University Technology Managers (AUTM) meeting, San Diego, California, February 29, 2008
  • "Joint Infringement: BMC and Its Wake," Texas Intellectual Property Law Journal 9th Annual Symposium, Austin, Texas, February 8, 2008
EDUCATIONAL BACKGROUND

1998 - J.D., honors, The University of Texas School of Law
1995 - B.S.M.E., high honors, Southern Methodist University

Mark was registered to practice in 1999 before the United States Patent and Trademark Office. He is admitted to practice in the Eastern, Western, and Southern Districts of Texas, and before the Court of Appeals for the Federal Circuit.

INTERESTS

Mark enjoys spending time with his wife and young daughter and son.

CIVIC INVOLVEMENT

Mark's daughter developed type 1 diabetes as a baby. As a result, Mark and his wife have become actively involved with the Austin Chapter of the Juvenile Diabetes Research Foundation (JDRF). Mark serves on the local Board of Directors and is a past Board President.

Mark also volunteers time at Disability Rights Texas (fka Advocacy, Inc.), providing legal services to parents of children with special needs.







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Fulbright Attorney - Mark Robertson

Mark Robertson, Partner

"We believe in getting our young lawyers involved with clients and handling matters as soon as possible. If you want responsibility at an early stage of your career, Fulbright may be the place for you."