Mark Charles Comtois

Mark Charles Comtois: Attorney with Duane Morris LLP
  • Partner at Duane Morris LLP (799 Attorneys)
  • 505 9th Street, Suite 1000, Washington, DC 20004
    View Mark Charles Comtois's office location
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Biography

Mark Charles Comtois focuses his practice on providing comprehensive counseling on all aspects of his clients' intellectual property . He obtains domestic and foreign protection for his clients in diverse technologies such as telecommunications; digital and wireless communications (from circuit to product); online banking; RF transmit and receive circuitry; semiconductors; digital television transmitters; software; medical devices and electronics; military and first responder equipment; organic light-emitting diodes (OLED); AC/DC generators; pet products, 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 mid-market to Fortune 100. He assists in establishing competitive patent review programs, assessing potential patent infringement issues and handles issues regarding standard-setting committees. 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

Areas of Practice (16)

  • Intellectual Property Law
  • Intellectual Property Litigation
  • Telecommunications Law
  • Wireless Communications
  • Patent Law
  • Patent Infringement
  • Trademark Prosecution
  • Copyright Registration
  • Copyright Protection
  • Energy Facility Siting
  • Nuclear Energy
  • Trademarks
  • Trade Secrets
  • Unfair Competition
  • Patents
  • Intellectual Property

Education & Credentials

Contact Information:
202 776 5240  Phone
202 478 0452  Fax
www.duanemorris.com/attorneys/markcharlescomtois.html
University Attended:
United States Naval Academy, B.S.M.E., 1981
Law School Attended:
George Mason University Law School, J.D., 1995
Year of First Admission:
1996
Admission:
U.S. Patent and Trademark Office; 1996, Virginia; Supreme Court of Virginia; Not admitted in District of Columbia
Memberships:

Professional Activities

•American Intellectual Property Law Association
•International Trademark Association
•Virginia State Bar

Military:
U.S. Navy, Nuclear Submarine Officer, 1981-1986
Birth Information:
Hartford, Connecticut, June 1, 1959
Reported Cases:
Representative Matters: Managed the intellectual property portfolio of an established business consulting firm: prosecute business-methods patents for software tool used for forecasting demand; analyze supply-chain elements to monitor and reduce risk and cost of over- or under-supply conditions; tailor supply considerations on the basis of period changes in demand.; Prosecutes business-method patent applications for software used by a large New York investment banking firm to monitor, predict and evaluate the impact of credit ratings on complex financial instruments and special-purpose vehicles and to predict and evaluate the application of cures to one or more downgrade-trigger events.; Managed the patent acquisition programs for leading companies in the communications, medical device, lighting, broadband wireless and financial industries.; Prosecuted patents for a leading provider of medical diagnostic and testing tools.; Prosecuted patents for a company providing lasers for diagnostics and communications.; Settled a patent infringement action involving SSL 3.0 (secure sockets layer technology) in the U.S. District Court for the Eastern District of Texas on behalf of one of the 10 largest banks in the United States.; Represented a global leader in networking in a case involving wireless LAN 802.11 A, G. and N protocol standards in the U.S. District Court for the Eastern District of Texas.; Obtained U.S. Customs exclusion of counterfeit goods for Adamba, Inc.; U.S. Bancorp v. Chamber of Commerce of the United States . (TTAB 1999). Settled multiple opposition matters for defendants without limiting scope of protection of registrations.; Managed the worldwide trademark registration and maintenance programs for Harris Corp., Gaylord Entertainment Co., Syda Foundation and the Chamber of Commerce of the United States.; Counsel to the defendant in a complex multi-patent infringement suit for digital subscriber line technology involving 15 patents.; Counsel to the defendant, as counterplaintiff, in a patent infringement action between only-competitors relating to geolocation technology for mobile telephones.; Counsel to the defendant/counterplaintiff in a multijurisdictional, multinational patent dispute regarding microwave communications equipment.; Manages the international trademark portfolio for a software company, for an international consortium of accountants, and for an international trade data company.; Manages and prosecutes utility and design patents for one of the largest pet products retailers.; Manages and prosecutes patents for a nationally-known food production company including novel food processing methods and systems and food packaging methods and systems.
ISLN:
912224433

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