Mark B. Wilson

Partner
Norton Rose Fulbright US LLP

Austin
United States
T:+1 512 536 3035
Austin
United States
T:+1 512 536 3035
Mark B. Wilson

Mark B. Wilson

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Biography

Mark Wilson is a partner in Austin, where his practice focuses on all aspects of patent prosecution and enforcement.

Mark's docket is split among patent counseling, patent prosecution and patent litigation matters, with an emphasis in biotechnology related matters. Mr. Wilson has significant experience in the areas of genetic engineering, gene therapy, molecular biotechnology assays, chemotherapy, drug screening and targeting, animal and plant breeding programs, biomass production, renewable energy, clean energy technologies, organic chemistry, pharmaceutical development and medical devices.

Mark counsels clients regarding intellectual property portfolio development, management and commercialization on a global scale. He is experienced in technology transfer, including both licensing and company formation and funding. Mr. Wilson drafts and reviews licensing, confidentiality and material transfer agreements. He also prepares pre-litigation, infringement, validity, patentability and freedom-to-operate opinions and provides due diligence review of intellectual property to companies and investors.

Mark's patent prosecution practice includes all aspects of drafting and prosecuting patent applications before the United States Patent and Trademark Office. He also supervises the prosecution of patent applications before many foreign patent offices. In addition, Mr. Wilson is experienced in appeal and interference practice before the Board of Patent Appeals and Interferences.

Mark's litigation experience includes all phases of discovery and trial in federal district courts, including investigation and formulation of litigation strategy, motion practice, depositions, preparation and examination of witnesses, trials and evidentiary hearings. He has experience in briefing and the development of appellate strategy before the Court of Appeals for the Federal Circuit.

Mark is involved in a wide variety of professional activities.  From 2012-2015, he served as Deputy Secretary General of FICPI (Federation Internationale des Conseils en Propriete Industrielle), having previously served FICPI as the Assistant Reporter General of the CET. In 2015, Mark was elected a Member of Honour of FICPI as well as a member of the FICPI Financial Advisory Board.  Mark has been a frequent presenter at FICPI events and participant in FICPI delegations, visiting government IP offices around the world.

Professional experience

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JD, with honors, The University of Texas School of Law, 1992
MA, Molecular Biology, The University of Texas, 1989
BA, Biology, Texas A&M University, 1986

Mark has been inducted into the Phi Kappa Phi, Phi Delta Phi and Order of the Coif honor societies.

  • Texas State Bar
  • US Patent and Trademark Attorney
  • Strategic development and management of global IP portfolios for small, medium and large companies
  • Developing strategies and process of IP review and clearance during product development for small, medium and large companies
  • Lead counsel drafting and prosecuting patent applications on core technology for multiple biotechnology and medical device companies
  • Lead counsel drafting and prosecuting patent applications in area of biotechnology and medical devices for universities and companies
  • Lead counsel on successful appeals before Board of Patent Appeals and Interferences
  • Lead United States counsel for patent owner in defending against opposed European patent
  • Lead counsel in litigation against Commissioner of United States Patent and Trademark Office concerning issues of patent term adjustment
  • Co-counsel in patent litigation matter involving transgenic plants
  • Co-counsel in patent litigation matter involving liposomal pharmaceuticals
  • Co-counsel in pre-filing investigation for patent infringement action against generic manufacturer in paragraph IV ANDA certification cases
  • Lead counsel in patent interference matter involving screening assays in which client prevailed and ultimately sold its patent to the other party for a very favorable price
  • Lead and co-counsel on due diligence for prospective buyers in areas of biotechnology and medical devices
  • Life Science Star, Intellectual Property, LMG Life Sciences, 2015 - 2016, 2018
  • IAM Patent 1000, Prosecution and transactions, Law Business Research, Ltd., 2020, 2022
  • Best Lawyers - Patent Law, Best Lawyers, 2022 - 2024
  • Co-author with Daniel Alge, "Information Paper regarding the Bayh–Dole Act for the Council of the European Union," October 2007
  • Co-author with Daniel Alge, "Patent Opposition Considerations for the Technology Transfer Professional," INDUSTRY & Higher Education, Vol. 21, No. 2, April 2007
  • Co-author with Daniel Alge, "Patent Opposition Considerations for the Technology Transfer Professional," Journal of the Association of University Technology Managers, Vol. XVIII, No. 1, Summer 2006
  • "Local Life Sciences Services Providers and Resources Panel," Austin Technology Council Life Sciences Summit, Austin, Texas, October 2015
  • "Make It Work and Last: How to Best Apply Strategic Alliance Management," BioFIT 2014, Lille, France, December 2014
  • "Emerge & Happen: Creative Solutions to Difficult Problems in Dealmaking," BioFIT 2014, Lille, France, December 2014
  • "Intellectual Property Diligence," 2014 Midwest IP Institute, Minneapolis, Minnesota, September 2014
  • "Norton Rose Fulbright Forum: Intellectual Property Diligence," Norton Rose Fulbright Webinar, December 2013
  • "Intellectual Property in Mergers and Acquisitions," 6th Annual Norton Rose Fulbright Mergers and Acquisitions School, Houston, Texas, November 2013
  • "The America Invents Act," 2012 All China Patent Attorney Association (ACPAA) and FICPI Joint Seminar, Beijing, China, December 2012
  • "The America Invents Act," 2012 Korean Patent Attorney Association (KPAA) and FICPI Joint Seminar, Seoul, Korea, December 2012
  • "The America Invents Act,"  2012 Japan Patent Attorney Association (JPAA) and FICPI Joint Seminar, Tokyo, Japan, December 2012
  • "Commercially Realistic Technology Transfer - Extracting IP From Research," 2012 FICPI World Congress, Melbourne, Australia, April 2012
  • "The America Invents Act: Its Impact on TTOs," AUTM Advanced Technology Operations and Organization Licensing Skills (TOOLS) Course, Los Angeles, California, March, 2012
  • "IP Conflicts of Interest, In a Large Firm, with an International Presence, in a Big Country with Many Industries," 2011 FICPI Open Forum, Rome, Italy, November 2011
  • "Topics on US Patent Law," RING der Industrie-Patentingenieure/-innen Österreichs - NETWORK IP AUSTRIA, at the Austrian Patent Office, Vienna, Austria, November 2011
  • "Ethical Considerations in IP Law," St. Edward University Center for Ethics and Leadership, Austin, Texas, October 2011
  • "'Non-Presentation' on International Business Law," St. Edward's University Semester in France Program, Angers, France, October 2010
  • "Early Stage Intellectual Property Strategies," Rice Alliance 2010 Technology Entrepreneurship Workshop, Houston, Texas, July 2010
  • "Contexts of US Patent Evaluation and Prosecution," US Department of State, International Trade Administration Special American Business Internship Training (SABIT) Group Program on Intellectual Property Rights, Austin, Texas, May 2010
  • "Business: Intellectual Property," 2010 InnoTech Emerging Medical Technology Symposium, San Antonio, Texas, March 2010
  • "Patentability of New Medical Uses in the United States," 2009 FICPI Symposium, Delhi, India, December 2009
  • "Patentability of Salicylic Acid Derivative – Perspective from the United States," 2009 FICPI Symposium, Delhi, India, December 2009
  • "Perspectives on United States Patent Prosecution and Procedures," Presented to IP India Delhi Division, Delhi, India, December 2009
  • "The US Bayh-Dole Act at ~30: Lessons from the Past and Implications for the Future of Tech Transfer," 2008 FICPI Open Forum, Florence, Italy, October 2008
  • "The Impact of US Patent Practice on Patent Quality," 2007 FICPI Open Forum, Sevilla, Spain, November 2007
  • "Beginning and Advanced Topics of Current Interest in Patent Law," 2007 AUTM Annual Meeting, San Francisco, California, March 2007
  • "Non-U.S. Patent Prosecution from the Experts," 2006 AUTM National Meeting, Orlando, Florida, March 2006
  • "Staffing the IP Practice," 2005 FICPI Open Forum, Lisbon, Portugal, November 2005
  • "Patents 101 – Domestic Patent Prosecution," 2005 AUTM Central Regional Meeting, Detroit, Michigan, July 2005
  • "Non-U.S. Patent Prosecution from the Experts," 2004 AUTM Central Regional Meeting, Chicago, Illinois, August 2004
  • United States Patent and Trademark Office
  • American Bar Association
  • State Bar of Texas
  • Travis County Bar Association
  • American Intellectual Property Law Association
  • Austin Intellectual Property Law Association
  • Fédération Internationale des Conseils en Propriété Industrielle (FICPI)
  • Intellectual Property Owners Association (IPO)
  • Association of University Technology Managers (AUTM)
  • Austin Technology Council
  • BioAustin
  • University of Texas School of Law, Adjunct Professor of patent prosecution

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