Application and Prosecution: Foreign and domestic patent application preparation and prosecution including appeals to Board of Patent Appeals and Interferences; drafting and prosecuting patent applications in technical areas including mechanical, computer hardware and software, GUI applications, thermoelectric cooling systems, sensors, transmitters, control devices, business methods, electronics, manufacturing processes, and telecommunications systems.
Client consultation: Patent, trade secret, copyright, trademark, unfair competition, licensing; prior art analyses; portfolio management and intellectual property strategies. Drafted confidentiality, employee proprietary information agreements, joint development, collaboration, software license, and other intellectual property agreements. Prepared numerous infringement, non-infringement, and invalidity opinions.
Litigation: Patent, trade secret, copyright, and trademark litigation; Drafted pleadings, interrogatories, and other.
In-House General Counsel and IP Counsel: Served as in-house General Counsel and IP Counsel for a small corporation and IP Counsel for a large corporation. Implemented an IP protection plan. Filed patent, trademark and copyright applications. Filed and litigated IP cases. Assessed competitor’s patent portfolio and provided infringement opinions. Conducted surveys of IP rights in specific technologies to ensure right to use. Managed IP litigation. Solicited disclosures and conducted technology reviews with patent review committees. Developed a mapping method for ensuring comprehensive patent coverage for new products and new technologies. Created and reviewed software license agreements, service provider agreements, and escrow agreements. Created an employee handbook and employee agreements. Conducted contract negotiations and provided direction for day-to-day business decisions.
Adjunct Professor: Austin Community College, Austin, Texas.
TECHNICAL
EXPERIENCE |
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Mr. Carlson has over nine years of experience as an electrical engineer including circuit design on military communications devices such as digital, analog and radio frequency circuits; aircraft system installation, and avionics integration including FAA certifications. Mr. Carlson also lead a design team that provided avionics equipment to the AWACS program. Mr. Carlson’s experience further includes development of cellular telephone system, bar code scanners, low voltage power supplies, hand held inventory and tracking hardware, and other wireless products.
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