Randall Brown

Practices

Education and Clerkships

J.D., George Washington University, 1985, with honors

B.A., Chemistry, with Biological Specialization, Duke University, 1981, magna cum laude

Bar Admissions

Texas, 1985

U.S. Patent and Trademark Office, 1984

Court Admissions

U.S. District Court for the Northern District of Texas, 1995

Languages

French

Profile

Randall Brown is the chair of the firm's Intellectual Property and Technology Transactions Section. He focuses on intellectual property law and has more than 25 years of experience in the field. He has prepared and prosecuted patent applications in a wide variety of technologies with a particular focus on the chemical arts including inorganic and organic chemical compositions and processes, downhole oilfield compositions and related processes, carbon nanotube technology, petrochemicals including catalysts and polymers, as well as biologicals, pharmaceuticals and nutraceuticals. 

Selected Speeches and Publications

  • "Conformity Is A Virtue: The U.S. Patent And Trademark Office Proposes Changes To The Duty Of Disclosure To Match The Therasense Standard," co-author, Lexology, July 26, 2011. 
  • "Patent Reform 2011: It Could Happen To You," co-author, Lexology, June 28, 2011. 
  • "The Supreme Court Rules On Bilski: Business Method Patents Survive," co-author, Lexology, June 29, 2010. 
  • "U.S. Patent And Trademark Office Proposes Three-Track Patent Examination Initiative," co-author, Lexology, June 23, 2010. 
  • "Management (And The Federal Circuit) Torched Our Patent: What Should We Have Done Differently?" co-author, Lexology, May 10, 2010. 
  • "Don’t Rely on Reissue to Fix Your Patent Claims," co-author, TechLaw, February 22, 2010. 
  • "Litigation Risk And Liability Danger From False Patent Marking In View Of Forest Group, Inc. v. Bon Tool Co," co-author, Lexology, January 27, 2010. 

Selected Client Representations

  • Patent portfolio development for clients ranging from start-ups to multi-national publicly traded companies, including the design and implementation of intellectual property protection programs.
  • Counseling regarding new and existing products including patent, trademark, copyright and trade dress infringement analyses, freedom of operation studies, patent validity analyses and the design and implementation of non-infringing alternatives to patented technology.
  • Preparing and prosecuting hundreds of patent applications directed to inorganic and organic compositions and processes, carbon nanotubes, proppant and related methods and processes, oilfield downhole compositions and equipment and dietary supplements. 

Representative Experience

  • Product Clearance - Retail

    Our client wished to launch a new footwear item in a highly competitive space. One of the industry leaders in this space had recently filed many lawsuits against third parties due to what it perceived as infringement of its patent and trade dress rights. We worked very closely – nearly every day for approximately seven months – with our client, including its legal, product design, and buying teams. We cleared a footwear design that was viable from both legal and marketing perspectives...

Professional Recognition

  • Intellectual Asset Management (IAM) Patent 1000: The World’s Leading Patent Practitioners 2012, 2014.  
  • Named a "Texas Super Lawyer" by Texas Monthly for 2005 and 2007-2013. 
  • Martindale Hubbell® Law Directory with a Peer Review Rating of AV® Preeminent™

Professional and Community Activities

  • Dallas Bar Association, Intellectual Property Section Chair, 2010; Director, 2002-2010; Vice-Chair, 2009 
  • State Bar of Texas, Intellectual Property Section 
  • American Intellectual Property Law Association 
  • Intellectual Property Owners Association, U.S. Post-Grant Patent Office Practice Committee 
  • Advanced Patent Law Institute Planning Committee Member, 2007-2012; Conference Faculty Member, 2005 
  • Technology Law Conference Planning Committee member

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