Mark Charles Comtois
Partner
Duane Morris LLP
505 9th Street, N.W., Suite 1000
Washington, DC 20004-2166
USA
Phone: +1 202 776 5240
Fax: +1 202 478 0452
Email:
MCComtois@duanemorris.com
Mark Charles Comtois focuses his practice on providing comprehensive counseling on all aspects of his clients' intellectual property. He obtains domestic and foreign protection for his clients in diverse technologies such as telecommunications; digital and wireless communications (from circuit to product); online banking, including account generation, automated account management, risk evaluation and assessment; financial business methods, including monitoring and predicting risk; RF transmit and receive circuitry; semiconductors; digital television transmitters; software; medical devices and electronics; military and first responder equipment; organic light-emitting diodes (OLED); and AC/DC generators. He is a former nuclear-trained officer for the United States Navy and worked as an engineer for several leading companies in the defense industry.
Mr. Comtois provides strategic guidance for portfolio management to clients ranging in size from mid-market to Fortune 100. He assists in establishing competitive patent review programs, assessing potential patent infringement issues and handles issues regarding standard-setting committees. He also performs intellectual property due diligence reviews for mergers and acquisitions.
He also counsels clients in the development, maintenance and protection of brand identifiers, including conducting registrability investigations including Internet infringement matters, prosecuting trademark applications, reviewing marketing materials, coordinating international protection programs and initiating inter-parties proceedings before the U.S. Patent and Trademark Office. He also assists clients in identifying, registering and protecting their copyrighted works.
Representative Matters
- Manage the intellectual property portfolio of an established business consulting firm: prosecute business-methods patents for software tool used for forecasting demand; analyze supply-chain elements to monitor and reduce risk and cost of over- or under-supply conditions; tailor supply considerations on the basis of period changes in demand.
- Prosecute business-method patent applications for software used by a large New York investment banking firm to monitor, predict and evaluate the impact of credit ratings on complex financial instruments and special-purpose vehicles and to predict and evaluate the application of cures to one or more downgrade-trigger events.
- Prosecute business-method patent applications for one of the 10 largest U.S. banks; applications pertain to statistical-analysis software used to predict and evaluate portfolio growth and bank's attendant profit and risk in connection with the time-variable components of its products.
- Manages the patent acquisition programs for leading companies in the communications, medical device, lighting, broadband wireless and financial industries.
- Prosecutes patents for a leading provider of medical diagnostic and testing tools.
- Prosecutes patents for a company providing lasers for diagnostics and communications.
- Settled a patent infringement action involving SSL 3.0 (secure sockets layer technology) in the U.S. District Court for the Eastern District of Texas on behalf of one of the 10 largest banks in the United States.
- Represented a global leader in networking in a case involving wireless LAN 802.11 A, G. and N protocol standards in the U.S. District Court for the Eastern District of Texas.
- Obtained U.S. Customs exclusion of counterfeit goods for Adamba, Inc.
- U.S. Bancorp v. Chamber of Commerce of the United States. (TTAB 1999). Settled multiple opposition matters for defendants without limiting scope of protection of registrations.
- Microsoft Corp. v. PC National, Inc. (E.D. Va. 1998). Favorable settlement for defendants of copyright and trademark infringement claims after discovery.
- Managed the worldwide trademark registration and maintenance programs for Harris Corp., Gaylord Entertainment Co., Syda Foundation and the Chamber of Commerce of the United States.
- Counsel to the defendant in a complex multi-patent infringement suit for digital subscriber line technology involving 15 patents.
- Counsel to the defendant, as counterplaintiff, in a patent infringement action between only-competitors relating to geolocation technology for mobile telephones.
- Counsel to the defendant/counterplaintiff in a multijurisdictional, multinational patent dispute regarding microwave communications equipment.
Professional Activities
- American Intellectual Property Law Association
- International Trademark Association
- Virginia State Bar
Admissions
- U.S. Patent and Trademark Office
- Virginia
- Supreme Court of Virginia
Education
- George Mason University Law School, J.D., 1995
- United States Naval Academy, B.S.M.E., 1981
Experience
- Duane Morris LLP
- Partner, 2002-present - Carter, Ledyard & Milburn, Washington, D.C.
- Special Counsel, 2000-2001 - Rogers & Killeen, Alexandria, Virginia
- Partner, 1998-2000
- Associate, 1996-1998 - PRC, Inc.,
- Engineer, 1990-1996 - ARINC Research,
- Engineer, 1988-1990 - EG&G,
- Engineer, 1986-1988 - United States Navy
- Nuclear Submarine Officer, 1981-1986
