Mark A. Tidwell is a partner in the Intellectual Property Practice Group in the Houston office. He focuses his practice on prosecution, acquisition, licensing, divestiture and enforcement of patent rights, trademark rights, trade secrets and copyrights. Mark has filed and prosecuted hundreds of patent, trademark and copyright applications.
Mark has expertise in medical and biomedical devices, nanotechnology, oil field exploration and production tools and equipment, data communications, power generation systems, heat transfer equipment, computer software and business methods, fuel cells and renewable energy systems, agricultural equipment, sports equipment, safety and security equipment, food preparation equipment, ultrasound equipment, seismic equipment, and ornamental designs, as well as other mechanical, electro-mechanical and chemical-mechanical devices.
Intellectual Property Litigation:
Mark's intellectual property litigation experience includes complex patent litigation involving patent infringement, patent invalidity, and technical aspects of patent prosecution procedures. He also handles trademark infringement, unfair competition, copyright infringement and breach of contract involving intellectual property. His technical background and experience in filing and prosecuting hundreds of patent, trademark and copyright applications provides his clients with a significant advantage in intellectual property litigation disputes.
Intellectual Property Transactions:
Intellectual Property Prosecution/Protection:
Mark's intellectual property prosecution and protection experience includes the management of domestic and foreign patent and trademark portfolios based on a strategy for maximizing his clients' key intellectual property and technology assets.
Patents - Preparation and prosecution of domestic and foreign patent applications, reissue applications, infringement opinions, patentability opinions, clearance opinions, validity opinions, interferences, and appeals to the Board of Patent Appeals.
Trademarks - Trademark selection, development, licensing and protection, preparation of domestic and foreign trademark, service mark, trade dress and product configuration applications, trademark registration oppositions and cancellations, and trademark clearance opinions.
Copyrights, Trade Secrets and Internet - Intellectual property rights counseling and assessment of Internet web sites and businesses, including Digital Millennium Copyright Act compliance, copyright of web site materials, web site use of third party materials, web hosting, patenting Internet technology, software and methods/processes, issues relating to trademark infringement and dilution over the Internet as well as disparaging and knock-off sites, meta-tag and other index use issues, and linking issues.
Mark was formerly employed as a research and development engineer designing downhole oil field tools for Western Atlas International, Inc. in Houston, Texas. In addition to his law degree, Mark holds a B.S. in mechanical engineering.
Publications & Speaking Engagements
- KSR v. Teleflex: Supreme Court Fine-Tunes the "Obviousness Standard" for Patentability and Invalidity
- Foreign Patent Protection
- Intellectual Property Law Overview
- U.S. Intellectual Property Overview for Foreign Companies
- Ins and Outs of Outsourcing
- Patents and the Registration Process
- Trademark/Patent Introduction
- Vehicles of IP Protection
- Leveraging Intellectual Property Law for Your Advertising Clients
- Supplemental Registration
Selected Representative Experience
02/22/2010 - Don’t Rely on Reissue to Fix Your Patent Claims
Reissue is a post-issuance procedure that enables the correction of certain limited types of errors in a patent, but cannot be used merely for precautionary claim improvements. The Board of Patent Appeals and Interferences (BPAI) at the U.S. Patent & Trademark Office recently decided in a precedential opinion that reissue cannot be used to add a dependent claim “simply as a hedge against possible invalidity of the original claims.” Ex parte
Yasuhito Tanaka, Appeal No. 2009-000234 (BPAI, Dec. 9, 2009) (per curiam
10/01/2009 - Software Licenses: Permission vs. Forgiveness and the Law of Unintended Consequences
In a case that may prove to be as serendipitous for struggling software companies as anything else, the United States Court of Appeals for the Sixth Circuit wrote another chapter in the law of unintended consequences with its ruling in Cincom Systems, Inc. v. Novelis Corp.
(published September 25, 2009 pursuant to Sixth Circuit Rule 206: File Name: 09a0346p.06).