Mark C. Comtois focuses his practice on providing comprehensive counseling and strategic protection of all facets of his clients' intellectual property . He works closely with clients to establish cost-efficient and effective intellectual property management processes tailored to the client’s specific situation and needs. He has deep experience in instituting and managing global intellectual property protection programs for large national and multinational organizations across a wide range of sophisticated technologies. He has instituted and operated comprehensive intellectual property protection programs including performing internal intellectual property audits, establishing and participating in in-house patent committee meetings to review and assess invention disclosures, and obtained patents and trademark registrations throughout the world.
Mr. Comtois obtains domestic and foreign protection for his clients in diverse technologies such as telecommunications; digital and wireless networks and communication devices (from circuit to product); mobile device geolocation; RF transmit and receive circuitry; semiconductors; digital television transmitters; glass manufacturing, testing, and product development; glass chemistry and compositions; software; online banking; medical devices and electronics; military and first responder equipment; organic light-emitting diodes (OLED); AC/DC generators; pet products, and food packaging. He is a former nuclear-trained officer for the United States Navy and worked as an engineer for several leading companies in the defense industry.
Mr. Comtois provides strategic guidance for portfolio management to clients ranging in size from start-ups through mid-market to Fortune 100. He establishes competitive patent review programs, assesses potential patent infringement issues, and regularly evaluates and responds to patent and trademark demand letters and negotiates settlement of adverse claims. He also performs intellectual property due diligence reviews for mergers and acquisitions.
He also counsels clients in the development, maintenance and protection of brand identifiers, including conducting registrability investigations including Internet infringement matters, prosecuting trademark applications, reviewing marketing materials, coordinating international protection programs, and initiating inter-parties proceedings before the U.S. Patent and Trademark Office. He also assists clients in identifying, registering, and protecting their copyrighted works.
Experience
•Duane Morris LLP
- Partner, 2002-present
•Carter, Ledyard & Milburn, Washington, D.C.
- Special Counsel, 2000-2001
•Rogers & Killeen, Alexandria, Virginia
- Partner, 1998-2000
- Associate, 1996-1998
•PRC, Inc.,
- Engineer, 1990-1996
•ARINC Research,
- Engineer, 1988-1990
•EG&G,
- Engineer, 1986-1988
•United States Navy
- Nuclear Submarine Officer, 1981-1986
