Hi! I’m Douglas A. Sorensen. I’ve practiced in the field of intellectual property law for over 30 years. I’ve filed and prosecuted hundreds of patent applications and negotiated dozens of licensing agreements and other contracts. I’ve worked in-house for Fortune 500 corporations and a top ten (worldwide) law firm. I’ve provided services to my clients from invention disclosure to litigation. This “soup to nuts” experience allows me to provide stronger counselling and service for any patent issue my clients may have. It is important to provide patent acquisition services with an eye to litigation and patent enforcement services with a comprehensive understanding of how the patent was acquired.
I’d be happy to discuss your needs for intellectual property legal services. Please contact me at:
Law Office of Doug Sorensen
+1-469-534-4592
doug@sorensenpatents.com
Specific areas of expertise include:
- Full range of U.S. patent and International prosecution experience including appeals and interferences. These patents include the technical areas of semiconductors, telecommunications, optics, liquid crystal, piezoelectric devices, radar imaging, computer systems, circuitry, optical lithography and others.
- All aspects of patent licensing including analysis, negotiation and drafting agreement contracts (Europe, Japan, Taiwan and the U.S.)
- Litigation of patents and trade name.
- IP Aspects of Standards Body Membership
- Developed and implemented policies on use of Open Source software
- Analysis of indemnity obligations and handling IP indemnity claims
- IP Aspects of Due Diligence in acquisitions and divestitures
- Negotiation and drafting of contracts including joint venture, joint development agreements, software licenses, purchase w/support agreements.
Education
Bachelor of Science in Electrical Engineering from the University of Nebraska – Lincoln (1981), member of Tau Beta Pi
Juris Doctor from the University of Nebraska – Lincoln (1983), Regent’s Scholar.
Master of Business Administration from Southern Methodist University 1993
Memberships
Bars of Texas, Nebraska and California.
Registered to practice before the United States Patent and Trademark Office in 1984.
Admitted to practice before the federal courts of the Northern and Eastern Districts of Texas, and the Federal Circuit Court of Appeals.
SPEECHES & PUBLICATIONS
Author “What is Obvious is not at all Obvious: a Call for a More Fundamental Change to U.S. Patent Law,” 23 Tex. Intell. Prop. L.J. 161 (2014)
Panelist “The Corporate Perspective – The Pros to Patent Pools, Such As – Patent Pool Efficiencies, Strength in Numbers, Focused Administrative Management, etc.” AIPLA Annual Meeting, October 22, 2010
Moderator “Preparing Agreements, Considering Representations, Warranties and Negotiating Intellectual Property Aspects, Including Ownership, Security Interests and Notice Filing Requirements” AIPLA Annual Meeting. October 16, 2009
Speaker “Licensing after SanDisk v. STMicroelectronics,” University of Texas Intellectual Property Law Journal Symposium, February 8, 2008, Austin, TX
Speaker “Technical Writer vs. Competent Patent Attorney,” Practical Tips on Patent Practice, American Bar Association, Intellectual Property Law Section, October 4, 2002, San Francisco, CA
Co-Chair/Speaker, “Intellectual Asset Management,” Infonex Canada, June 14 & 15, 1999 Toronto, Ontario, Canada
Author/Speaker “Dispute Resolution and Negotiating in Japan,” 32nd Patent Law Institute, Southwestern Legal Foundation, November 10, 1994, Dallas, TX
Author/Speaker “Handling Trade Secrets of Others,” Trade Secret Law Institute, National Intellectual Property Law Institute, April 15, 1994, Washington, D.C.