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RESUMÉ
of MARK A. LITMAN
Education
B.S.
Ch. E., Graduate studies (Org. Chem.) Cornell University 1966 J.D.,
American University, 1970.
Professional
Employment
U.S. Patent Examiner, 1966-72; Senior Intellectual Property Counsel,
3M, 1972-96; 2d Vice President, Schwegman, Lundberg, Woessner and
Kluth, P.A. 1996-2000; CEO Mark A. Litman & Associates P.A. 2000-date.
Technical
Expertise
At 3M, Mark Litman was the primary attorney for five business units
with annual sales exceeding 1 billion dollars, and three Research
Laboratories/Research facilities. He has a broad range of technical
expertise that has been developed with particular strengths in organic
chemistry, material science, apparatus, gaming technology (including
software and hardware for video gaming and table games) and imaging
technology. The expertise in the imaging technologies includes both
the physical materials disciplines (imaging media) as well as process
technology, imaging apparatus, and software implementation. Imaging
technologies include photography, electrophotography, digital imaging,
NMR, sonograms, mass transfer imaging, X-ray, direct thermal, and
other energy based systems, as well as the apparatus and processes
(including software) utilized in the imaging systems. These disciplines
have also required strong backgrounds in surfactants and antistatic
agents (including fluorocarbons), polymer science (including expertise
in polymerization techniques, polymer compositions, catalysis, crystalline
morphology, and rheology) and coating technology. Technology base
from private practice also includes extensive work with mechanical
systems such as catheters, pacemakers, drug delivery systems (external
and implantable), MR imaging systems, packaging materials, and agricultural
processing. Over the past 15 years, over fifty applications on software
and computer hardware have been written and prosecuted.
Professional
Expertise
In addition to being a hands-on patent application writer and prosecutor,
advanced skills in prosecution procedures and strategies world-wide
have been developed. A unique range of experience has been acquired
after five years as an Examiner in the U.S. Patent and Trademark
Office, twenty-four years of writing and prosecuting nearly one
thousand patent applications in the U.S. and over four thousand
applications internationally. Specialized practice includes more
than one hundred successful U.S. P.T.O. Appeals, interference proceedings,
and personal appearances at EPO hearings and EPO Appeals.
As the Group
Attorney for the Imaging Group of 3M, professional duties included
client counseling at the Division, Group and Sector level, creation
of core technology patent strategies, the negotiation and drafting
of licensing agreements (internationally, including the EPO, Japan,
China, Canada and South America), joint venture agreements and infringement/validity
opinions. Negotiations have been accomplished as the lead negotiator
with the highest levels of management and counsel internationally.
Work experience also includes active management of litigation as
both in-house counsel and private practitioner.
Professional
Articles have been published (1979 and 1989) in the Journal of the
Patent Office Society, and those articles have been cited in Chisholm
on Patents and in decisions by the Court of Appeals for the Federal
Circuit. Continuing Legal Education Programs presented include "Negotiating
in Diverse Cultures, (1996)" (MN CLE), Advanced Appellate Practice
(MILE, 1994) and "Recent PTO Policy Issues" (MIPLA, 1998). In 2002
Mr. Litman gave a presentation on the unique issues of Patent Protection
in the Gaming Industry at Global Gaming 2002. Mark A. Litman also
has four patents as an inventor and donates time to Young Inventors
Congress of Minnesota and acts as a judge for The William Mitchell
College of Law moot court competitions.
Mark Litman
has also drafted and presented a program for training attorneys
while at 3M. That program has been prepared solely by him and has
been offered and presented to companies and universities. He also
has extensive negotiation background and working relationships with
Universities throughout the U.S. and the U.K.
Professional
Associations
Member District of Columbia Bar (by Examination), Member Minnesota
Bar (by Examination) U.S. Patent Bar; Minnesota Intellectual Property
Legal Association, AIPLA
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