Michael Stimson
AREAS OF CONCENTRATION
Intellectual Property and Technology
Patent Prosecution
Patent Litigation
Pharmaceutical and Medical Devices
EXPERIENCE
Michael’s practice focuses on patent prosecution, patent counseling and patent litigation. He has significant experience in assisting clients with developing strategic plans to build global patent portfolios to protect their technology. He is experienced in technology transfer, including in-licensing, out-licensing and acquisition of technology for both small and large scale transactions. Michael regularly advises clients with respect to third party patents and prepares pre-litigation, infringement, validity, patentability and freedom-to-operate opinions.
Michael’s patent prosecution experience includes preparing and prosecuting utility and design patents, and participating in reissues, reexaminations and interferences before the United States Patent and Trademark Office. Michael also directs the prosecution of patent applications before foreign patent offices and has served as lead U.S. counsel in numerous European opposition proceedings.
Michael’s litigation experience runs from pre-trial investigations though trial and appeals. He also has considerable experience with multi-national patent litigation. He has worked closely with local counsel in the Netherlands, the United Kingdom, Germany, France, Australia, and Canada, both prosecuting and defending actions related to patent infringement and validity in those countries. In the course of those proceedings, Michael has participated in trials before the district and appeal courts of the Netherlands, the United Kingdom, Germany, France and Australia.
Immediately prior to joining Fulbright, Michael was in-house counsel at a medical device manufacturer for five years. During his tenure, he was responsible for developing and implementing a cost-effective strategy for procuring, maintaining and enforcing a global patent portfolio to protect the company’s core technologies and oversaw multi-national patent litigation involving the company’s core technologies.
REPRESENTATIVE EXPERIENCE
Development and implementation of strategies for procuring, maintaining and enforcing global IP portfolios for small, medium and large companies
Preparation and prosecution of patent applications before the United States Patent and Trademark Office in a broad range of mechanical and electrical technologies, including medical devices, semiconductor manufacturing, telecommunications, and industrial machinery
Freedom-to-operate searching and counseling during product development for small, medium and large companies
Due diligence for prospective acquisitions of medical device companies and medical device technologies
Co-counsel for a major medical device manufacturer in multi-patent, multi-national litigation involving company’s core wound care technology
Co-counsel for a major medical device manufacturer in multi-patent, multi-national litigation involving cardiac stent technology
PROFESSIONAL ACTIVITIES AND MEMBERSHIPS
American Bar Association
American Intellectual Property Law Association
Association of Corporate Counsel
EDUCATIONAL BACKGROUND
1998 – J.D., George Washington University (Magna cum laude)
1992 – B.S., Mechanical Engineering, Iowa State University
While in law school, Mr. Stimson was a member of the Law Review and served on the Moot Court Board. He was also a member of The Order of the Coif.
