of MARK A. LITMAN
B.S. Ch. E., Graduate studies (Org. Chem.) Cornell University 1966
J.D., American University, 1970.
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
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,
on-line 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.
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, forty years of writing and prosecuting nearly one
thousand U.S. Patents and many applications internationally.
Specialized practice includes more than one hundred successful U.S.
P.T.O. Appeals, interference proceedings, Appeals to the Court of
Appeals for the Federal Circuit 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);"Recent PTO Policy
Issues" (MIPLA, 1998) and Deficiencies in the Decision and USPTO
Application of Mayo Collaborative Services, dba Mayo Medical
Laboratories, et al. v. Prometheus Laboratories, Inc. 2013 95 J.
Pat. & Trademark Off. Soc'y p.47-59.
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 nine patents as an inventor and donated 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., Canada and the U.K.
Member District of Columbia Bar (by Examination), Member Minnesota
Bar (by Examination) U.S. Patent Bar; Minnesota Intellectual
Property Legal Association, AIPLA
of Mark A. Litman