Tamsen Barrett

Partner
Norton Rose Fulbright US LLP

Austin
United States
T:+1 512 536 3123
Austin
United States
T:+1 512 536 3123
Tamsen Barrett

Tamsen Barrett

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Biography

As partner, Tamsen focuses her practice on intellectual property matters which include domestic and foreign patent prosecution, enforcement, and strategic development of patent portfolios.

Tamsen's experience emphasizes biotechnology related matters, and her experience includes the areas of genetic engineering, gene therapy, molecular biotechnology assays, drug screening and targeting, biotechnology, renewable energy, clean energy technologies, plants, organic chemistry, pharmaceutical development, and medical devices.

Tamsen counsels clients regarding the development, management, and commercialization of commercially valuable intellectual property portfolios on a global scale. She has significant experience with the preparation of enforceability, validity, patentability, and freedom-to-operate opinions and provides due diligence review of intellectual property to companies and investors.

Tamsen's patent prosecution practice includes all aspects of drafting and prosecuting patent applications before the United States Patent and Trademark Office, including appeals before the Patent and Trademark Appeal Board. She also supervises the prosecution of patent applications before many foreign patent offices.

Previously, Tamsen worked as a registered contract patent agent and served as an intern for the District Court of the Honorable Judge Joy Flowers Conti.


Professional experience

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JD, University of Pittsburgh, 2006
BS, Biochemistry, Iowa State University, 2003

While in law school, Tamsen was honored as a member of the Order of the Barristers and received the CALI Excellence for the Future Award in Patent Law in 2004. Tamsen also participated in the Giles Rich Moot Court Competition and served as the Vice President to the Student Intellectual Property Law Society.

Tamsen is admitted to practice in Texas and Minnesota. 

  • Minnesota State Bar
  • Texas State Bar
  • US Patent & Trademark Attorney
  • Experience in preparing patent applications, responses to office actions, appeal briefs, examiner interviews, and a variety of other related prosecution matters
  • Formulate strategies for prosecuting patent applications in foreign jurisdictions and supervise execution of those strategies
  • Strategic portfolio development for small, medium, and large companies and universities
  • Develop and manage strategies and process of IP review and clearance during and after product development
  • Manage the monitoring and maintenance of a company's patent portfolio
  • Research and advise a company on the process of design registration in foreign jurisdictions
  • Coordinate and perform due diligence for clients looking to acquire or sell intellectual property
  • Prepare applications for Plant Variety Protection
  • Texas Lawyer On the Rise, Texas Lawyer, ALM, 2019
  • Texas Rising Star, IP, Thomson Reuters, 2017
  • "New USPTO subject matter eligibility (35 USC § 101) examiner guidance and life science examples," Health Law Pulse, May 9, 2016
  • "Healthcare and Technology," available online: https://www.texasbar.com/AM/Template.cfm?Section=Annual_Meeting_Home&Template=/CM/HTMLDisplay.cfm&ContentID=30096, under Materials, May 26, 2016.
  • "Supreme Court addresses indefiniteness in Nautilus: Claim must 'inform with reasonable certainty'," Norton Rose Fulbright - Legal update, June 03, 2014.
  • "En Banc Federal Circuit Holds Section 112, First Paragraph Does Include A Separate Written Description Requirement," Fulbright Briefing, March 26, 2010.
  • "Inventorship:  Let's Help Each Other," AUTM Webinar, Austin TX, February 2019
  • "Intellectual Property and Licensing," Texas Medical Device Alliance (TMDA) Quarterly Meeting, Austin, TX, February 2019
  • "Where Are All the Women Inventors?", AUTM Annual Meeting, Phoenix, AZ, February 2018
  • "Inventorship:  Let's Help each Other," AUTM Central Region Meeting, Chicago, IL  July 2017
  • "From Josephine Cochran to Stephanie Kwolek:  Women Inventors and Trailblazers," Austin, TX, October 2016
  • "Health Care and Technology," State Bar of Texas Annual Meeting, Fort Worth, TX, June 2016
  • "Stem Cells: From Controversy to Commercialization," South by Southwest Interactive, Austin, TX, March 2016
  • "Hot Legal Issues for Life Science Companies in 2015," BioAustin Seminar, Austin, TX, August 2015
  • "What the Aftermath of Hurricane Alice has Done to Digital Health," Texas Life Science Forum, Houston, TX, May 2015
  • "Austin's Biotech Boom: 5 Revolutionary Startups," South by Southwest Interactive, Austin, TX, March 2015
  • "Basics of Intellectual Property Protection," mhca's Innovation Incubator, Austin, TX, November 2014
  • "Basics of Intellectual Property Protection," Austin Technology Incubator Lunch and Learn, Austin, TX, April 2014
  • "Basics of Intellectual Property Protection for Start Ups," UT Horizon Fund 2nd Annual Student Investment Competition, Austin, TX, May 2013
  • "Micro Entity Status and the AIA," Austin, TX March 2013
  • "Portfolio Development After the AIA," Texas Intellectual Property Law Journal 14th Annual Intellectual Property Symposium, Austin, TX, February 2013
  • American Intellectual Property Law Association (AIPLA)
  • Austin Intellectual Property Law Association (AIPLA)
  • US Patent and Trademark Office
  • State Bar of Texas
  • State Bar of Minnesota

Pro bono services to Texas Accountants and Lawyers for the Arts