Mark A. Catan is a Partner with extensive experience in all areas of patent law. Mr. Catan’s practice includes strategic counseling, patent validity and infringement opinions, patent prosecution, IP transactions, and IP due diligence in support of mergers and acquisitions. Mr. Catan possesses broad industry and legal experience with expertise in the electrical, computer, and mechanical areas.

His background covers a wide range of technical areas, including mechanical devices and systems; expert knowledge of turbulent fluid mechanics; computer hardware and software including data compression, I/O systems, and data storage, machine intelligence, computational semantics, search and summarization; medical devices, medical imaging including MRI, optical tomography, and ultrasound; business methods and Internet related applications and systems, control systems, alternative energy including solar thermal and photovoltaics. He is also a specialist in intellectual asset management, structured innovation, and signal processing.

Mr. Catan helps clients develop and refine their internal patent issue management processes, including infringement avoidance and innovation/portfolio-building. His expertise in this area is a result of unique practical experience born of his partnership with forward-thinking clients. This experience has led to cost-savings, reduced risk, and most dramatically to greater innovation.

Mr. Catan’s education emphasized signal processing and fluid mechanics. His industry background featured six years as a Principal Investigator at Brookhaven National Lab in experimental R&D. This was primarily relating to alternative energy and energy recovery. He is a U.S. registered patent attorney, architect of an enterprise class IP decision support platform, and a TRIZ-certified innovation expert. Mr. Catan also maintains a working knowledge of current foreign patent law to help ensure clients receive effective global patent protection.

REPRESENTATIVE MATTERS

  • Managed IP diligence for IPO of billion dollar medical device company
  • Drafted over 500 patent applications in electronic, mechanical engineering, software, biological, and chemical fields
  • Partnered with client to construct governance platform for collaborative to manage inside and outside IP and structured innovation
  • Chief architect of collaborative software platform for patent issue management and innovation
  • Manage portfolios for research investigators who have successfully licensed their IP

PREVIOUS EXPERIENCE

  • Miles & Stockbridge, PC, Principal
  • Proskauer Rose LLP, Associate
  • Lyon & Lyon LLP, Associate

PUBLICATIONS AND SPEECHES

  • MEDA Ignite Innovation “Patent Document Review: Not Hating It” (May 2014).
  • “An Intellectual Asset Management Program For SMEs,” Law360 (February 17, 2012).
  • “Knowledge Exchange Issues In Open Innovation,” Law360 (July 19, 2010).
  • “Why Good Patents Go Bad,” Law360 (January 29, 2010).
  • “Issues Facing Faculty In Outside Consulting Jobs,” Law360 (October 30, 2009).
  • “IP Strategy Based On Idealized Invention Interview,” Law360 (September 02, 2009).
  • “IP Innovation In a Down Economy,” Law360 (April 01, 2009).

Education

  • Benjamin N. Cardozo School of Law, J.D., 1993
  • State University of New York at Stony Brook, M.S. (Mechanical Engineering), 1990
  • Grinnell College, A.B., 1978

Admissions

  • District of Columbia
  • New York
  • United States Patent and Trademark Office