Bio
In-House IP Counsel, PLLC
Serving Corporate IP Needs
Bio

Summary

Paul Revis has worked as an in-house employee with four different companies since 1998, the companies ranging from emerging technology companies to Fortune 500 companies. He has experience managing all phases of securing and enforcing IP rights. His experiences include performing or managing each of the functions listed on the
Managed IP Functions page of this website. Paul has focused much of his career on working closely with corporate management to evaluate a company’s legal needs, establishing a strategy to meet those needs, and then implementing the strategy, all within corporate budget and timing requirements.  Implementation has often included continually evaluating results, communicating with corporate leaders, and making any necessary course corrections to achieve project and program success.  A significant portion of Paul's practice has focused on patent rights and enforcements, but he has also helped companies manage trademark, trade secret, and copyright matters. He has additionally worked extensively drafting and managing agreements, licenses, and other transactional matters for the companies for which he has worked. Paul puts high emphasis on learning corporate clients’ businesses and then integrating legal knowledge with the needs of the business in continuing communication with business leaders to offer practical, clear, and actionable legal advice.  Paul has also served as a General Counsel, where he has adhered to the same philosophy of learning and understanding the client’s business and applying sound legal principles to meet the client’s legal needs, both IP and general.

Paul has worked with many technologies throughout his career and thoroughly enjoys learning new technologies and contributing to the innovative accomplishments of his clients by capturing related IP. Technologies with which Paul has direct experience as a patent attorney, engineer, or Air Force officer include: medical devices, orthopedic devices, spinal devices, computer assisted surgery devices, methods of treatment, ultrasonic bone stimulation healing devices, desktop, laptop, server, and networking system hardware and software, Internet software and connectivity, web hosting services, computer component mountings and connectors, memory devices, computer chassis design, consumer electronics, oilfield tools, power generation equipment, electronic identification devices, locks, cable vehicles and systems, recreational equipment, oil and gas frac water and other wastewater treatment technologies, transportation and logistics systems, structural engineering software, structural steel design, steel connection design, steel fabrication, construction, electronic warfare systems, missile guidance systems, electronic countermeasure devices, electronic reconnaissance devices, manufacturing processes, computer software, and business methods.

Prior to his career in law, Paul was a Navigator, Electronic Warfare Officer with the U.S. Air Force and practiced engineering.  He draws lessons on working as part of a team from these experiences, as well as a better understanding of the organizational structures of his corporate clients and processes of technical innovation. 

Education and Honors

University of Houston Law Center
, Doctor of Jurisprudence, May 1998

Vanderbilt University
, Bachelor of Engineering, May 1988 (Magna Cum Laude); Tau Beta Pi; Arthur J. Dyer Prize for the best work in structural engineering in the class of 1988; Chi Epsilon; Baptist Student Union, President 1987-88; Air Force Reserve Officer Training Corps, Four-year Scholarship

Medtronic Foundation Mission in Motion Award for volunteer service, 2005 (1 of 5 employees recognized out of 30,000+ employees)


Delivered Veterans’ Day presentations to local elementary school classes on the meaning of Veterans’ Day and U.S. flag etiquette, 2003, 2004


U.S. Air Force Citations: Two Aerial Achievement Medals, one with Oak Leaf Cluster; The Air Force Commendation Medal

Accomplished exploitation of numerous signals of highest national priority while flying DESERT STORM, CEASE-FIRE CAMPAIGN, and SOUTHERN WATCH sorties

Top Academic Graduate, U.S. Air Force Electronic Warfare Officer Training

Earned Engineer in Training Certificate

Order of the Engineer Member
 
Admissions

Registered to practice before the United States Patent and Trademark Office

State Bar of Arkansas

State Bar of Tennessee

Representative Experiences
 
  Ideas
  • Implemented and improved multiple idea capture programs for corporate clients
  • Experience designing and improving idea capture programs by implementing effective disclosure forms, inventor notebooks, deadline schedules, review committees, and incentive programs 
 Patents
  • Accomplished or managed drafting and filing of several hundred patent applications with a goal of producing patents that are enforceable against competitive entities
  • Placed emphasis on developing claim sets focused on the products of entities most competitive with the client, including analyzing and improving claim sets iteratively in light of options for designing around initial claim sets
 IP Outside the U.S.
  • Selected patent applications and claims for prosecution outside of the U.S., directing filings to jurisdictions beneficial to clients and working with foreign associates to obtain claim coverage beneficial to the clients’ markets
  • Strategically managed filings outside of the U.S. to limit expenditures while maintaining market appropriate patent portfolios
  • Identified, designed, and managed oppositions of competitor patents in European Union countries
  • Managed analyses of competitor patent portfolios and managed product clearances in view of competitor patents in European Union countries, Japan, and China
 Post Issuance
  • Directed reexamination of competitor patents, including selection of prior art and selection of appropriate reexamination procedures, leading to competitor claims being stayed in ongoing patent litigation
 Product Clearance
  • Managed clearance activities with an emphasis on defining clear paths for business leaders to follow and including delivering design around options, legal opinions from multiple sources, and contingency plans
  • Placed a high priority on clearly defining options and risks associated with each option and providing actionable recommendations to business leaders
 Licensing -- Pre-Litigation -- Litigation
  • Oversaw licensing activities, including negotiating and drafting licenses and settlements and managing out-licensing projects
  • On multiple occasions and for multiple corporate clients identified patents ready for out-licensing or enforcement, identified and analyzed competitive products relative to claim elements, and initiated one or both of licensing programs and successful patent litigations against competitors
 Agreements
  • Experience drafting and managing agreements related to IP licensing, IP purchase, product development, medical consulting, litigation settlement, confidentiality, assignment of inventions and rights, sales and reseller intellectual property terms and conditions, employee conditions and obligations, employee severance, master service, real and personal property leases, and others.
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