Marc Hubbard

Education

  • J.D., Southern Methodist University Dedman School of Law (1988)

  • B.S., Swarthmore College (1985) Engineering (Electrical Concentration)

Admisions

  • Registered, United States Patent and Trademark Office (1987)

  • Admitted to practice in Texas, Texas Supreme Court (1988)

  • United States District Court, Northern District of Texas (1989)

Recognitions

  • Recognized, AV Preeminent Rating (5.0 out of 5), Martindale-Hubbell Attorney Directory

  • Best Lawyers in Dallas, D Magazine 2018, 2020, 2021, 2022

  • Texas Super Lawyers 2019, 2020, 2021, 2022

Experience

Representative types of matters handled

  • Advice and counseling on patent, trademark, copyright, and other intellectual property right issues, include developing and managing domestic and international intellectual property protection strategies

  • Patenting of invention, including writing original applications, representation at the USPTO during examination and appeals.

  • Trademark selection, clearance, and registration

  • International patent and trademark portfolio management, including extensive experience in managing prosecution, appeals, and oppositions in patent applications in Europe, China, and many other countries

  • Managing infringement risks

    • Freedom to operate searches and studies

    • Design arounds

    • Opinions on the validity and infringement of IP rights

  • Copyright clearance and infringement issues, including advising on computer APIs and file formats and reverse engineering and multimedia clearances

  • Advising open-source software licensing

  • Registering copyrights

  • Appeals, AIA trials, oppositions, cancellations, and other proceedings at the USPTO

  • Counsel on infringement and other IP related litigation in district courts, including assisting trial counsel

  • Transactions involving IP rights, including

    • patent and trademark licenses

    • advising on structuring of intellectual property transactions

    • negotiating IP provisions in asset and stock purchase agreements, mergers, spin-offs, and other complex transactions

    • IP due diligence and audits

    • Technology transfer involving universities and research institutions

    • Drafting and negotiating licenses and service agreements relating software, websites, media, technology, and know now

  • Testifying expert on patent prosecution in federal district court

Teaching experience

  • Adjunct clinical professor of law at the Dedman School of Law at SMU in Dallas (2014-2018) and director of the school’s USPTO certified patent clinic

Organizations

Texas State Bar

  • Member IP Section and Past chair of PTO Committee

  • Texas Bar Foundation Fellow

American Intellectual Property Law Association

  • Board of Directors (2022-2025)

  • Member, Amicus Committee (2016-2019)

  • Member, Legislation Committee (2015-2018; 2020-2022)

  • Member, Special Committee on Section 101 Legislation

  • Chair and Vice-Chair, Patent Law Committee (2011 – 2015)

  • Co-Chair, Patentable Subject Matter Task Force (2014 – 2017)

  • Vice-chair, 2011 Midwinter Institute

  • Chair and Vice-Chair, International Education Committee (2007-2011)

  • AIPLA Fellow

Institute of Law and Technology, Center for American and International Law (Plano, Texas)

  • Co-Chair, 52nd and 53rd Annual Intellectual Property Conferences (2014-2015)

  • Member, Advisory Board (2010-Present)

Barbara M.G. Lynn American Inn of Court (Dallas, Texas)

  • Founding Master (2012 -Present)

Dallas Bar Association

  • Chair, IP Section (2017)

  • Vice-Chair, IP Section (2016)

  • Treasurer, IP Section (2015)

  • Director, IP Section (2010 – 2014)

  • Dallas Bar Foundation Fellow

American Bar Association

  • Member, IPL Section

Institute of Electronic and Electrical Engineers

  • Past Member

Presentations

  • Speaker and Moderator, “The USPTO’s Reconstruction of Patent Eligibility Law,” 58th Annual Intellectual Property Law Conference of the Center for American and International Law, Plano, Texas (November 11, 2020)

  • Speaker, “International Patenting: Drafting a specification to the highest common denominator”, 57th Annual Intellectual Property Law Conference, The Center for American and International Law, Plano, Texas (November 12, 2019)

  • Panelist, “How New Guidance Will Affect Practice,” AIPLA on the Road: The Latest on Patent Practice Before the USPTO and the PTAB,” Houston, Texas (April 25, 2019)

  • Speaker, The State Bar of Texas Intellectual Property Law Section, 32nd Annual Advanced Intellectual Property Law Course, “Is This an AIA Patent and is IPR Available Yet?” Dallas, TX (March 1, 2019)

  • Speaker, The Center for American and International Law, 55th Annual Conference on Intellectual Property Law, “International Patent Prosecution, Tips and Tricks,” Dallas, Texas (November 13, 2018)

  • Guest lecturer on intellectual property law, 55th Annual Academy of American and International Law, The Center for American and International Law, Plano, Texas (June 2018)

  • Speaker, The Center for American and International Law, 55th Annual Conference on Intellectual Property Law, “New Opportunities and Frontiers in Intellectual Property,” Dallas, Texas (November 14, 2017)

  • Speaker, American Intellectual Property Law Association Webinar, “Alice In Wonderland: Amending Section 101 to Get Out of the Rabbit Hole” (February 9, 2017).

  • Address to the Intellectual Property Law Section, Dallas Bar Association, “Alice In Wonderland: Amending Section 101 to Get Out of the Rabbit Hole,” Dallas, Texas (February 26, 2016)

  • Speaker, 29th Annual Advanced Intellectual Property Law Course, State Bar of Texas Intellectual Property Law Section, “The Evolution of Functional Claiming,” San Antonio, Texas (February 19, 2016)

  • Panelist, President’s Forum, “Patent Eligible Subject Matter: The Search for Solutions to a Growing Problem,” Annual Meeting of the American Intellectual Property Law Association, Washington, DC (October 24, 2015)

  • Speaker, address to the State Bar of Texas, Intellectual Property Workshop: Getting Your Paten Granted, on “Recent Changes to USPTO Guidance, Right or Wrong, That Will Affect How You Write and Prosecute Your Patents,” Houston, Texas (March 18, 2015)

  • Panelist, President’s Forum, “What’s Next for Patent Eligibility: Federal Circuit and the USPTO Gloss,” 2015 American Intellectual Property Law Association Midwinter Institute, Orlando, Florida (January 31, 2015)

  • Speaker, address to State Bar of Texas Intellectual Property Law Section, 27th Annual Advanced Intellectual Property Law Course: “I’m So Confused – What’s Prior Art Now?”, Dallas, Texas (March 20, 2014)

  • Speaker, Address to Annual Meeting of the American Intellectual Property Law Association, Oracle v. Google: deciphering the district court’s decision of no copyright protection for computer APIs, Washington, D.C. (October 25, 2013)

  • Speaker, Address to Dallas Bar Association Computer Law Section: Oracle v. Google: How Can Your Protect APIs? Dallas, TX (October 22, 2012)

  • Speaker, Address to Dallas Bar Association IP Section: Introduction to trial practice before the PTAB in contested proceedings, Dallas, TX (October 17, 2012)

  • Speaker, Address to Dallas Bar Association International Section: The 2011 America Invents Act: is the U.S. now singing in harmony or still humming its own tune? (September 18, 2012)

  • Speaker, Address to Dallas Bar Association IP Section: Introduction to trial practice before the PTAB in contested proceedings, Dallas, TX (August 24, 2012)

  • Speaker, Address to SMU Dedman School of Law, Symposium on Emerging Intellectual Property Issues, Effects of the America Invents Act on After Grant Practices (April 20, 2012)

  • Speaker, Address at the State Bar of Texas Patent Workshop 2012, Practicing Under the New Patent Laws: New Strategies for Third Parties, The Role of New Third Party Preissuance Submissions Practice under the AIA (March 21, 2012)

  • Speaker, Address at the 49th Annual Intellectual Property Law Conference: Patent Reform Act: What Should I Tell My Clients?, Plano, TX (Nov. 7-8, 2011)

  • Speaker, Address at the American Intellectual Property Law Association Annual Meeting: The Promise of Reexamination – Fulfilled or Fizzled?, Washington, D.C. (Oct. 20-22, 2011)

  • Speaker, Address to the Dallas Bar Association IP Section: Indemnification from Infringement – How to Best Protect Your Client’s Interests, Dallas, TX (Sept. 22, 2011)

  • Speaker, Address to the Dallas Bar Association IP Section: America Invents Act – Introduction to Pending Patent Reform Legislation, Dallas, TX (May 18, 2011)

  • Speaker, Address at the Meeting of the Business Law and Corporate Counsel Sections at the Texas State Bar Annual Meeting: IP Reps and Due Diligence in Corporate Transactions – A Plea From the Peanut Gallery, Ft. Worth, TX (June 11, 2010)

  • Speaker, Address to the Intellectual Property Section of the Dallas Bar Association: Value Added Patent Prosecution – Smaller, Stronger, Faster, Cheaper, Dallas, TX (March 2010)

  • Speaker, Address at the Tennessee Intellectual Property Law Association, Fall 2009 CLE Seminar: Value Added Patent Prosecution, Nashville, TN (Nov. 13, 2009)Speaker, Address at the Center for American and International Law, 47th Annual Intellectual Property Law Conference: Value Added Patent Prosecution – Bigger, Stronger, Faster Cheaper, Plano, TX (Nov. 10, 2009)

  • Speaker, Address to the Dallas Area Paralegal Association, 2009 IP Conference: Ethics – How NOT to Practice Law as an Intellectual Property Paralegal, Dallas, TX (Jan. 16, 2009)

  • Speaker, Address at the University of Houston Law Foundation, Intellectual Property for the General Lawyer Seminar: Licenses, Transfers and Other Contracts Involving IP, Houston, TX (Aug. 8, 2008)

  • Speaker, Address at the American Intellectual Property Law Association, Midwinter Institute: Can We Still Revive Unintentionally Abundant Applications – Aristocrat Technologies v. International Game Technology, Phoenix, AZ (2008)

  • Speaker, Address at the State Bar of Texas, Business Disputes in the Digital Age Seminar: Patent Litigation in the Digital Age, Dallas, TX (May 19-20, 2005)

  • Speaker, Address at the State Bar of Texas, 18th Annual Intellectual Property Law Course: The FTC Perspective on Patent Pooling, Austin, TX (March 10-11, 2005)

Publications

  • “Is this something that I can patent?” Dallas Bar Association Headnotes (October 2013)

  • “Advising Clients on the First to File System,” Westlaw Journal: Intellectual Property (January 25, 2012)

  • “What Bilski Really Means – Intellectual Property Law,” The Texas Lawyer (December 20, 2010)

  • “Stop, think before you upload: Proposed changes to current copyright law may leave you unprotected,” Dallas Business Journal (October 22-28, 2010)

  • “The Effect of Seagate on Patent Infringement Risk Management Strategies,” Intellectual Property and Law Journal, printed by Aspen Publishers (March 2010)

  • “Avoiding Patent Infringement in the Design Process,” Embedded Intel® Solutions (Spring 2009)

Other Engagements

  • Moderator, DBA-USPTO Program on IP Attachés, Dallas, Texas (2018)

  • Moderator, SMU Dedman School of Law, 14th Annual Symposium on Emerging Intellectual Property Issues, “Patent Eligibility: Is it time for reform?” Dallas, Texas (September 29, 2017)

  • Participant, Patentable Subject Matter Workshop, Berkeley Center for Law & Technology​, ​UC Berkeley School of Law (March 19, 2017)

  • Conference Co-Chair, The Center for American and International Law, Patent Trial and Appeal Board Bench Bar Conference, Dallas, Texas (Oct. 18-20, 2016)

  • Co-Chair, AIPLA-USPTO 2015 Roadshows: Enhancing Patent Quality and Conducting AIA Trials, Santa Clara, Dallas, and Alexandria (August 24 to 28, 2015)

  • Conference Co-Chair, The Center for American and International Law, 53rd Annual Conference on Intellectual Property Law, Dallas, Texas (Nov. 2015)

  • Conference Co-Chair, The Center for American and International Law, 52nd Annual Conference on Intellectual Property Law, Dallas, Texas (Nov. 2014)

  • Conference Co-Chair, The Center for American and International Law, Advanced Practice under the American Invents Act, Dallas, Texas (April 11-12, 2013)

  • Session Chair, The Center for American and International Law, 50th Annual Intellectual Property Law Conference: Technology, Licensing and IP Rights, Plano, TX (Nov. 12-13, 2012)

  • Session Chair, The Center for American and International Law, 49th Annual Intellectual Property Law Conference: Technology, Licensing and IP Rights, Plano, TX (Nov. 7-8, 2011)

  • Session Chair, The Center for American and International Law, 48th Annual Intellectual Property Law Conference: Technology, Licensing and IP Rights, Plano, TX (Nov. 2010)

  • Moderator, American Intellectual Property Law Association, Annual Meeting, PCT Issues and International Education Committee: A Global Patent Application, Washington, D.C. (2008)

  • Moderator, American Intellectual Property Law Association, Spring Meeting Plenary Session: Handicapping Pending Supreme Court and Federal Circuit Cases – Patent, Trademark and Copyright, American Intellectual Property Law Association, Boston, MA (2007)