Mark C. Comtois

Partner

  • Mark C. Comtois
  • Phone: +1 202 776 5240

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  • Duane Morris LLP
    901 New York Avenue N.W., Suite 700 East
    Washington, DC 20001-4795
    USA

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 and artificial intelligence; mobile device testing and refurbishment, online banking; medical devices and electronics; military and first responder equipment; organic light-emitting diodes (OLED); AC/DC generators; pet products, and food manufacturing and 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.

Representative Matters

  • Prosecutes and obtains patents for a world-leading multinational technology company specializing in the manufacture and development of specialty glass and ceramics.

  • Manages and protects 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.

  • Managed the patent acquisition programs for leading companies in the communications, medical device, lighting, broadband wireless and financial industries.

  • Prosecuted and obtained patents for a leading provider of medical diagnostic and testing tools.

  • Prosecuted and obtained patents for a company providing lasers for diagnostics and communications.

  • Manages and prosecutes patents and trademarks for a leading company for mobile device testing and refurbishment.

  • Manages and prosecutes patents and trademarks for a number of software and artificial intelligence companies in a variety of industries.

  • Settled a patent infringement action involving multi-configurable hand trucks.

  • Prevailed in a trademark and unfair competition action in the District of Utah after motion practice.

  • 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.

  • 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 periodic changes in demand.

Admissions

  • U.S. Patent and Trademark Office (USPTO)
  • Virginia
  • Supreme Court of Virginia

Not admitted in D.C. Practice in D.C. limited to matters and proceedings before federal courts and agencies.

Education

  • George Mason University Antonin Scalia School of Law, J.D., 1995
  • United States Naval Academy, B.S.M.E., 1981

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

Professional Activities

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