Mike Stimson

Senior Counsel
Norton Rose Fulbright US LLP

Austin
United States
T:+1 512 536 3116
San Antonio
United States
T:+1 210 270 7177
Austin
United States
T:+1 512 536 3116
San Antonio
United States
T:+1 210 270 7177
Mike Stimson

Mike Stimson

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Biography

Mike Stimson has more than twenty years of experience helping companies with their technology transactions and intellectual property issues. Mike's clients range in size from start-ups to Fortune 50 companies.

Mike's practice focuses on the negotiation of technology transactions for buyers, sellers and developers.  He has negotiated countless IT, joint development, joint venture, in-license, out-license, transition services, consulting, business process outsourcing, distribution and confidentiality agreements.  Mike frequently advises on cross-border technology transactions.

In addition to the negotiation of technology transactions, Mike routinely leads intellectual property and data privacy due diligence investigations, and counsels clients regarding intellectual property issues in acquisitions, investments and divestitures. He also assists clients in evaluating the intellectual property of others, including conducting freedom to operate evaluations and preparing invalidity and non-infringement patent opinions.  Mike also assists clients in developing strategies for the cost-effective development of IP portfolios.

Prior to joining Norton Rose Fulbright, Mike served as in-house counsel at a global medical technology company where his responsibilities included both IP portfolio development and the resolution of IP disputes.  Mike's in-house experience provides him with a valuable perspective on the demands and needs of a client.


Professional experience

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JD, magna cum laude, George Washington University Law School, 1998
BS, Mechanical Engineering, Iowa State University, 1992

While in law school, Mike was a member of the Law Review and served on the Moot Court Board. He was also a member of The Order of the Coif.  He is a member of the Texas, New York and District of Columbia bars and is admitted to practice in the Southern and Eastern Districts of New York, the District of Columbia, and the Court of Appeals for the Federal Circuit.  Mike is registered to practice before the United States Patent and Trademark Office.

  • District of Columbia Bar
  • New York State Bar
  • Texas State Bar
  • US Patent & Trademark Attorney


Technology Transactions and Data Privacy Representations

  • Numerous parties in drafting, negotiating, and enforcing IT agreements, including cloud computing, software-as-a-service (SAAS), Internet of Things (IoT) and "Big Data" agreements.
  • A multinational pharmaceutical and life sciences company in the establishment of a $300 million plus joint venture relating to the development of CRISPR/Cas9 technology that involved negotiating the joint venture agreement, license agreements, services agreements and commercialization agreements.
  • An international medical diagnostic company in the acquisition of a Chinese medical technology company valued at over $100 million where IP was the core asset, including due diligence of target's technology and intellectual property estates.
  • A global chemical company in the drafting and negotiation of technology license and FEED agreements for a new petrochemical complex in China valued in excess of $3 billion. 
  • A medical technology company in the acquisition of negative pressure wound therapy technology including due diligence of the target's technology and intellectual property estate and negotiation of the asset purchase agreement.
  • A pharmaceutical company in the establishment of a joint venture for the clinical development of a nanoparticle platform for cancer treatment that involved drafting negotiating the license agreements, services agreements and commercialization agreements.
  • A public utility company in the acquisition of advanced metering infrastructure technology, including negotiating supply agreements, software licenses, and escrow agreements.
  • A Middle East chemical company in the acquisition of catalyst technology including due diligence of the target's technology and intellectual property estates and negotiation of the asset purchase agreement.
  • A startup rental car company in an equity investment and ultimate acquisition by an automotive manufacturer, including due diligence of the startup's IP portfolio and  negotiation of technology license agreements.
  • Numerous life sciences and medical technology company in connection with private equity funding events.
  • Numerous domestic and international clients on issues relating to data protection, security breach, security and privacy laws.


Patent Representations

  • Advising numerous clients on the development of cost-effective IP portfolios.
  • Preparing and prosecuting patent applications before the United States Patent and Trademark Office in a broad range of mechanical and electrical technologies, including medical devices, semiconductor manufacturing, telecommunications, and industrial machinery.
  • Trial counsel for a global consumer electronics manufacturer in a patent infringement litigation involving laser printer technologies.
  • Trial counsel for global technology companies in various US district courts and before the Patent Trials and Appeals Board for highly contested patents covering commercially successful technologies.
  • "Inter Partes Review: Claim amendments at the Patent Trial and Appeal Board", Norton Rose Fulbright Webinar, October 8, 2015
  • "Intellectual Property Diligence," 2014 Midwest IP Institute, September 18, 2014
  • "Regenerative Medicine and Stem Cells: Patent Primer," San Antonio Conference on Stem Cell Research & Regenerative Medicine, RegenMed SA, February 14, 2014
  • "Critical Legal Changes: IP, Taxation & Regulatory," 5th Annual Emerging Medical Technology Symposium. April 16, 2013
  • State Bar of Texas
  • Intellectual Property Owners Association, Licensing Committee