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Henry, Mark J.
Staas & Halsey LLP
1201 New York Avenue, NW, 7th Floor
Washington, DC 20005
Phone: 202.434.1500
Fax: 202.434.1501
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Summary
Current Employment Position(s)
Partner
Lawyer Overview
Mark Henry has a broad technical background with degrees in both chemical engineering and electrical engineering. He has a bachelors degree in chemical engineering from the Pennsylvania State University and a master's degree in electrical engineering from the George Washington University. In addition to extensive coursework in circuit theory, signal processing, organic chemistry and physical chemistry, he has studied telecommunications, biochemistry and material science. He has used this diverse background to focus on cross-over technologies such as microelectronics and semiconductor physics. Mr. Henry attended law school at Widener University and Catholic University. Mr. Henry is admitted to the bars of the District of Columbia, Virginia and New Jersey and to practice before the U.S. Patent and Trademark Office. He has also passed the qualifying exam for professional engineering certification.
Before joining Staas and Halsey, Mr. Henry worked for the Westinghouse law department, writing mechanical and chemical patent disclosures for nuclear processing and other energy technologies. He also worked for the U.S. Patent and Trademark Office, examining patent applications in the fields of adhesive materials and various chemical manufacture. Mr. Henry is experienced in virtually all aspects of patent procurement from developing a strategy regarding where to file and which claims to present, to appealing before the Court of Appeals for the Federal Circuit. Mr. Henry is also experienced in complex post-allowance correction proceedings. He has lectured on post-allowance correction and presented seminars on claim drafting. His work in patent procurement has been in a wide range of technical arts including semiconductor device electronics, organic and inorganic chemistry, wireless communication, polymer processing, optical communication and telecommunication. Mr. Henry has worked with clients in conducting infringement and validity studies. He has used these studies to conduct licensing and settlement negotiations and to counsel clients during litigation. Mr. Henry has also drafted complex patent licensing, product development and confidentiality agreements. Mr. Henry is the author of "State Courts Hearing Patent Cases: A Cry for Help to the Federal Circuit," Dickinson Law Review, reprinted in Intel. Prop. Today, "USPTO Reverses Policy on 'Bypass Continuation' Applications," Intel. Prop. Today, "'Technical' Amendments to 35 U.S.C. 102(e): Another Instance of the Doctrine of Unintended Consequences?" Intel. Prop. Today, and "Patent Licensing After Medimmune v. Genentech" Intel. Prop. Today. Mr. Henry is also a member of the American Intellectual Property Law Association, the Patent and Trademark Office Society and the American Chemical Society.
Areas of Practice
- Intellectual Property Law
- Patent
- Trademark
- Copyright
- Unfair Competition
West Practice Categories
Intellectual Property Law, Patents, Trademarks, Copyrights, Unfair Competition
Qualifications
Bar Admissions
- Virginia
- New Jersey
- District of Columbia
- U.S. Patent and Trademark Office
Professional Associations and Memberships
- American Intellectual Property Law Association (Member)
- American Institute of Chemical Engineers (Member)
- Patent and Trademark Office Society (Member)
Honors and Awards
- Recipient, American Jurisprudence Award in Family Law
Past Employment Positions
- Westinghouse Electric Company Law Department, Intellectual Property Law Section, Law Clerk
- U.S. Patent and Trademark Office, Examiner
Education
- Widener University School of Law, Harrisburg, Pennsylvania
J.D. - George Washington University
M.S.E.E. - Pennsylvania State University
B.S., Bachelor of Science
Major: Chemical Engineering - Catholic University of America
Fraternities/Sororities
- Phi Alpha Delta
Articles
Published Works
- "State Courts Hearing Patent Cases: A Cry for Help to the Federal Circuit", Dickinson Law Review
- "State Courts Hearing Patent Cases: A Cry for Help to the Federal Circuit", Intellectual Property Today
- "The USPTO Reverses Policy on 'Bypass Continuation' Application", Intellectual Property Today, Vol.
- "Technical Amendments to 35 U.S.C. 102(e): Another Instance of the Doctrine of Unintended Consequences?", Intellectual Property Today
Office Information
Address
1201 New York Avenue, NW, 7th Floor
Washington, DC 20005
Phones
202.434.1500
Faxes
202.434.1501