Michael J. Mlotkowski

Michael J. Mlotkowski leads the Strategic IP Counseling & Portfolio Management Practice of the firm. He focuses on all aspects of intellectual property law including patent, trademark, copyright, trade secret, licensing and Internet. His areas of technical focus include mechanical, thermal sciences, chemical, computer software, information technology, and e-commerce.

In addition to being a renowned expert in patent prosecution, Mike served as Chief Trademark Counsel for Mobil Corporation, with responsibility for worldwide trademark and copyright matters and managed Mobil’s Princeton, New Jersey intellectual property law office, with responsibility for handling licensing matters. In this role, he was involved in negotiating and drafting complex international and domestic technology transfer agreements.

Mike’s practice is international and encompasses a broad range of IP and technology matters including: conducting complex patent prosecution, including patent appeals, reexaminations, reissues and protests; rendering opinions concerning the infringement, validity and enforceability of patents; handling trademark prosecution, oppositions, domain name, copyright and trade secret matters; patent, copyright and trade secret litigation; counseling on the formation of joint ventures and implementing corporate IP programs; handling patent and trademark enforcement issues; negotiating and drafting technology transfer agreements; conducting IP due diligence; handling IP aspects of employment issues; representing clients in intellectual property matters relating to universities and government contracts; advising clients on business methods and information technology related issues.

Mike has been recognized by his peers as a top lawyer in his field and is rated AV by Martindale-Hubbell, the highest rating given to practicing attorneys. He is a frequent contributor to leading patent and trademark journals, as well as a speaker on intellectual property law.

TECHNICAL EXPERTISE

• Aerospace

• Biotechnology

• Chemistry

• Computer Science

• Digital Marketing

• Electrical

• Materials Science

• Mechanical

• Physics

EDUCATION

• J.D., Rutgers University

• M.B.A. with emphasis in business management systems, Oakland University

• B.S. Engineering with a concentration in mechanical and thermal sciences, Oakland University

EXPERIENCE

• Successfully negotiated all IP-related issues for a party to a $6B joint venture

• Successfully conducted IP-related negotiations with FTC for a party to an $82B merger

INSIGHTS

• Presentation on “Treatment of Transferability of IP Rights and License Agreements for Due Diligence Purposes” at the AIPLA Annual Meeting

• Presentation on “Trademark Coexistence Agreements” at the INTA Annual Meeting

• Presentation on “Designing and Implementing an IP Due Diligence Program” for the National Business Institute

• Presentation on “Legislative and Case Law Update and Forecast” for the National Business Institute

• Frequent contributor to INTA Bulletin

PRACTICE AREAS

• Appellate

• Art & Copyright Law

• Corporate

• Digital Media and Internet

• Litigation

• Patents

• Product Liability

• Sports & Entertainment

• Strategic IP Counseling & Portfolio Management

• Trade Secret & Unfair Competition

• Trademarks

• Transaction & Licensing

BAR & COURT ADMISSIONS

• District of Columbia Bar

• New Jersey Bar

• Pennsylvania Bar

• Virginia Bar

• United States Patent and Trademark Office

• Supreme Court of Virginia

• District of Columbia Court of Appeals

CONTACT

Email: mlotkowski@dcpatent.com