Mark Garrett

Partner
Norton Rose Fulbright US LLP

Austin
United States
T:+1 512 536 3031
Austin
United States
T:+1 512 536 3031
Mark Garrett

Mark Garrett

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Biography

Mark Garrett's practice focus is in the area of patent law – both litigation and transactional – though he has analyzed and litigated trade secret, trademark, and copyright issues. His extensive patent litigation experience extends from pre-filing investigations through trial, several of which have involved direct competitors. Mark has also been involved in several appeals and has successfully argued before the Federal Circuit.

Mark's extensive post-grant proceeding experience includes directing all aspects of reissues, reexaminations, and inter partes review (IPR) proceedings, and serving as co-counsel in interferences.  Mark's IPR teams have prevailed for petitioners and patent owners alike, including, in some cases, through appeal. 

In addition, Mark has experience with patent licenses and settlements, conducting intellectual property due diligence, and performing patentability and freedom-to-operate evaluations.

Mark's patent prosecution experience includes preparing and prosecuting utility and design patents and advising universities, startups, and established companies about how best to pursue and manage their intellectual property assets.

In the course of his litigation and transactional work, Mark has worked with many different mechanical, electrical, processing, software, and medical device technologies, including petroleum exploration drilling technology, motor and generator technology, outdoor power equipment, endoscopic technology, injection port technology, intraosseous access device technology, biosensor technology, endovascular technology, microsurgical robotic technology, medical imaging technology, optical filters, and telecommunications equipment.

Mark started his career at the intellectual property boutique firm of Arnold, White & Durkee.


Professional experience

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JD, honors, The University of Texas School of Law, 1998
BSME, high honors, Southern Methodist University, 1995

Mark is admitted to practice in the Eastern, Western, and Southern Districts of Texas and before the Court of Appeals for the Federal Circuit, and has been admitted pro hac vice to practice before several other federal district courts during his career.  He was registered to practice in 1999 before the United States Patent and Trademark Office.

  • Texas State Bar
  • US Patent & Trademark Attorney
  • Legal 500 USA, recommended lawyers, Intellectual property - Patent litigation - full coverage, The Legal 500, 2016
  • Lawyer of the Year, Austin: Litigation - Intellectual Property, Best Lawyers, 2017
  • The Best Lawyers in America, Best Lawyers, 2009 - 2020
  • Acritas Star, Acritas, 2018 - 2019
  • IP Star, Managing Intellectual Property,  2014 - 2019
  • Texas Rising Star, IP litigation, Thomson Reuters, 2007 - 2009, 2011 - 2012
  • Texas Super Lawyer, IP litigation, Thomson Reuters, 2016 - 2019
  • Co-author, "US Supreme Court rules isolated DNA is not patent-eligible," June 18, 2013
  • Co-author, "Federal Circuit Holds That False Marking Claims Must Be Pled With Particularity," Fulbright & Jaworski Briefing, March 31, 2011
  • Co-author, "Supreme Court Issues Bilski - Business Methods Still Eligible, Federal Circuit to Address Further Business and Biotech Claims," Fulbright & Jaworski Briefing, June 2010
  • Co-author, "PTO Rescinds Controversial Rules and Pushes for Substantive Rulemaking Authority," Fulbright & Jaworski Alert, October 9, 2009
  • Co-author, "'Matter of First Impression' – District Court Orders Return of Sunset Royalties Paid for Patent Later Invalidated on Appeal," Fulbright & Jaworski Briefing, December 3, 2008
  • Co-author, "In re Bilski – Machine-Or-Transformation Test Announced for Assessing Processes Under 101, State Street Test Overruled, and Software Left Alone," Fulbright & Jaworski Briefing, November 17, 2008
  • Co-author, "Are Some Method Patents Going Out of Business? The Federal Circuit Sua Sponte Orders En Banc Hearing in In Re Bilski," Intellectual Property Counselor, June 2008
  • Co-author, "Tafas v. Dudas: The PTO Rules Limiting Continuations and Claims Are Null and Void," Fulbright & Jaworski Alert, April 2, 2008
  • Co-author, "Are Some Method Patents Going Out of Business? The Federal Circuit Sua Sponte Orders En Banc Hearing in In re Bilski," Fulbright & Jaworski Briefing, March 19, 2008
  • Co-author, "PTO Ruling: The Court's Opinion," IP Law 360, November 2007
  • Co-author, "District Court Orders PTO to Stand-down on New Rules," Fulbright & Jaworski Alert, November 1, 2007
  • "Patent Protection (Ch. 10)," Doing Business in Texas, January 2003
  • "Recent Developments in Trademark Law," 8 Texas Intellectual Property Law Journal 1, Fall 1999
  • Presenter, "PTAB Proceedings: New Rules and Key Practice Tips," 21st Annual Advanced Patent Law Institute, November 3, 2016
  • "Inter Partes Review: Patent Owner's Preliminary Response," Norton Rose Fulbright Webinar, January 22, 2015  
  • "Inter Partes Review: A Deeper Dive Into the Good, the Bad and the Unexpected," Norton Rose Fulbright Webinar, April 30, 2014
  • "Section 101:  Where Things Stand and Tips For Patent Drafters and Litigators About How to Cope," 17th Annual Advanced Patent Law Institute, November 2, 2012
  • "Prometheus -- the Flook of Biotech," HarrisMartin's Intellectual Property Law Conference, June 14, 2012
  • "Patentable Subject Matter: Prosecution Strategies Against the Backdrop of U.S. Supreme Court, Federal Circuit and BPAI Decisions," 16th Annual Advanced Patent Law Institute, October 28, 2011
  • Speaker at "Intellectual Property Leadership Summit & Symposium," Austin Chamber of Commerce event featuring Director Kappos, Austin, Texas, November 22, 2010
  • "Analysis of Today's In re Bilski Decision from the Supreme Court: Its Impact on Patents from Business Methods to Biotechnology," Fulbright & Jaworski L.L.P. web seminar, June 28, 2010
  • "Patentable Subject Matter: Bilski and the New PTO Interim Guidance," Strafford Publications, Inc. webinar, October 29, 2009
  • "How to Create and Manage Intellectual Property," Symposium at American Society for Artificial Internal Organs (ASAIO), Dallas, Texas, May 30, 2009
  • "Patent Eligibility After Bilski," Austin Intellectual Property Law Association, Austin, Texas, March 24, 2009
  • "In re Bilski: Where We Are Now with Statutory Processes," Texas Intellectual Property Law Journal's 10th Annual Symposium, Austin, Texas, February 6, 2009
  • "In re Bilski: What Happens Next?" Meeting of Cyberlaw Section of Houston Bar Association, Houston, Texas, January 30, 2009
  • "Fundamentals of Effective Patents," Corporate Executive Board's General Counsel Roundtable teleconference, July 10, 2008
  • "New Rules," 21st Annual Intellectual Property Law Course by TexasBarCLE and cosponsored by the Intellectual Property Law Section of the State Bar of Texas, Austin, Texas, March 6, 2008
  • "Evolving Patent Strategies: Top Ten Questions to Ask When Filing and Prosecuting," Association of University Technology Managers (AUTM) meeting, San Diego, California, February 29, 2008
  • "Joint Infringement: BMC and Its Wake," Texas Intellectual Property Law Journal 9th Annual Symposium, Austin, Texas, February 8, 2008
  • American Intellectual Property Law Association
  • Austin Intellectual Property Law Association
  • Hon. Lee Yeakel IP Inn of Court (Master)
  • Austin Bar Foundation (Fellow)
  • State Bar of Texas
  • Travis County Bar Association

Mark's daughter developed type 1 diabetes as a baby. As a result, Mark and his wife became actively involved with the Austin Chapter of JDRF. He is a former Board member and past Board President. Mark also volunteers time at pro bono clinics for Volunteer Legal Services.