Douglas A. Sorensen
Phone: (972) 732-1001
Fax: (972) 732-9218
E-Mail: sorensen@slater-matsil.com

BIOGRAPHY

Douglas A. Sorensen has practiced in the field of intellectual property law for over 30 years. His experience includes major corporations (Texas Instruments and STMicroelectronics), as well as law firms such as Sidley Austin and Hughes & Luce (now K&L Gates). He provides services to clients from invention disclosure to litigation. Doug's "soup to nuts" experience allows him to provide his clients with strong counselling and service for a broad range of patent issues. He provides patent acquisition services with an eye to litigation and patent enforcement services with a comprehensive understanding of how the patent was acquired.

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, 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 names
• 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, and purchase w/support agreements

EDUCATION

Doug earned a Bachelor of Science in Electrical Engineering from the University of Nebraska - Lincoln in 1981, where he was a member of Tau Beta Pi. He received his Juris Doctor from the University of Nebraska - Lincoln in 1983, where he was a Regent's Scholar. In addition, Doug earned a Master of Business Administration from Southern Methodist University in 1993.

MEMBERSHIPS

Doug is a member of the State Bars of Texas, Nebraska and California. He was registered to practice before the United States Patent and Trademark Office in 1984. He is also 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.