J.D., Southern Methodist University Dedman School of Law (1988)
B.S., Swarthmore College (1985) Engineering (Electrical Concentration)
Registered, United States Patent and Trademark Office, Reg. No. 32,506 (1987)
Admitted, Texas Supreme Court (1988) and United States District Court, Northern District of Texas (1989)
Recognized, AV Preeminent Rating (5.0 out of 5), Martindale-Hubbell Attorney Directory
Best Lawyers in Dallas, D Magazine 2018, 2020
Texas Super Lawyers 2019, 2020
Marc has practiced for over thirty years exclusively in the field of intellectual property law. He has counseled and represented public and private companies of all sizes, including startups and early-stage technology ventures, private equity and venture capital firms, and non-profit institutions in matters involving patents, trademarks, trade secrets, and copyrights. Marc works mostly with start-ups and small-to-midsize businesses, working with founders and senior business and technology executives on developing and carrying out an intellectual property protection strategy tailored to the particular needs of the business and resolving disputes over intellectual property.
Some examples of the types of matters that he has handled are:
- Advice and counseling on patent, trademark, copyright, and other intellectual property right issues, resolving disputes involving such rights, and risk management strategies for infringement
- Developing and managing domestic and international intellectual property protection strategies
- Patenting, including drafting original applications, representation at the USPTO, and coordination and management of international patenting programs
- Trademark selection, clearance, and registration
- Advising on copyright clearance and infringement issues, including open-source software issues
- Registering copyrights
- International patent and trademark portfolio management, including extensive experience in managing prosecution, appeals, and oppositions in patent applications in Europe, China, and many other countries
- Studies and opinions on the validity and infringement of IP rights, including freedom to operate studies and opinions
- Representation at the PTAB and TTAB, and in district courts
- Representation in transactions involving IP rights, including patent and trademark licenses and transfers, advice on IP issues in complex corporate transactions, IP indemnifications, and due diligence
- Technology transfer and licensing with universities and research organizations
- Drafting and negotiating agreements relating to services involving, and licenses for, software, media, technology, and know now
Marc has drafted, prosecuted patent applications, and advised clients about patents on inventions in the mechanical, electrical, computer software, materials, medical device, pharmaceutical, image processing, computer encryption and security, consumer product, oilfield services, telecommunications, and business methods fields, among others.
Through the American Intellectual Property Law Association (AIPLA), the Dallas Bar Association’s Intellectual Property Law Section, and Institute of Law and Technology at the Center for American and International Law, Marc is actively involved with efforts to improve the intellectual property system and to educate lawyers by speaking at and planning conferences and educational meetings for lawyers and the general public. Marc is a past chair of the IP Section of the Dallas Bar Association, a past co-chair of the Patentable Subject Matter Eligibility Task Force of the AIPLA, and a past-chair of the Patent Law Committee and International Education Committee of the AIPLA. He is currently a member of the AIPLA’s Legislation Committee and Patentable Subject Matter Task Force.
Marc was an adjunct clinical professor of law at the Dedman School of Law at SMU in Dallas, where he helped to establish and directed the school’s USPTO certified patent clinic.