Concentration

Prosecution, development, acquisition, enforcement, and defense of patents and other intellectual property assets; technology transactions including licensing, strategic alliances, manufacturing joint ventures, and mergers and acquisitions

Summary

Brian Prewitt concentrates on matters relating to patents, trademarks, and copyrights, as well as technology development, acquisition, licensing, strategic alliances, distributorship and manufacturing agreements, due diligence, counseling, and litigation. He has significant technical experience in the areas of integrated circuit design, semiconductor manufacturing technology, computer architecture, and computer systems.

Prior to joining Baker Botts, Mr. Prewitt practiced corporate and transactional law, gaining broad experience in the areas of corporate transactions, mergers and acquisitions, intellectual property licensing and transfer, trademark and copyright prosecution, real estate transactions, real estate development, lending, and estate planning and probate.

Before attending law school, Mr. Prewitt worked as a circuit design engineer at Digital Equipment Corporation and Compaq Computer Corporation in Shrewsbury, Massachusetts.

Representative Engagements

• Major international computer equipment manufacturer – patent portfolio development; preparation and prosecution of patent applications
• Major international consumer goods manufacturer – patent portfolio development; preparation and prosecution of patent applications; counseling regarding patent infringement risks
• Major international semiconductor manufacturer – preparation and prosecution of patent applications; counseling regarding patent infringement risks
• Major international photomask manufacturer – preparation and prosecution of patent applications
• Major international instrumentation software manufacturer – negotiation of patent and trademark licenses and other business agreements
• Major international telecommunications company – development and enforcement of licensing strategies; negotiation of patent licenses
• Major international transportation, construction, and industrial products manufacturing company – development and enforcement of licensing strategies; negotiation of patent and trademark licenses; preparation and prosecution of patent applications
• Major international steel manufacturer – development and enforcement of licensing strategies; negotiation of patent and trademark licenses and manufacturing joint ventures; counseling regarding contractual and copyright dispute; intellectual due diligence in connection with divestiture of company to publicly-traded purchaser
• Major international medical device manufacturer – preparation and prosecution of patent applications
• Major international automotive company – preparation and prosecution of patent applications
• Small medical devices manufacturer – development and enforcement of licensing strategies; negotiation of strategic alliance agreements and patent licenses; preparation and prosecution of trademark applications; counseling regarding patent license dispute
• Small computer equipment manufacturer – patent portfolio development; preparation and prosecution of patent applications; counseling regarding patent infringement risks; intellectual property due diligence in connection with divestiture of company; defense of breach of contract action filed against client in connection with divestiture of company
• Small software company – preparation and prosecution of patent applications; intellectual property due diligence in connection with divestiture of company
• Leading U.S. luggage manufacturer – client counseling and preparation and negotiation of agreements (including intellectual property transfer agreements) related to a $40 million divestiture
• International chemical company – client counseling and preparation and negotiation of agreements (including intellectual property transfer agreements) related to a $28 million divestiture of a specialty chemical division

Publications, Speeches, and Presentations

• "Patent and Trademark Office Amends Procedures for Accelerated Examination of Patents," Baker Botts IP Report, January 2007
• "Fair Notice: Releases and Indemnities Under Texas Law," Bell Nunnally & Martin LLP in-house presentation, Dallas, November 2005
• Co-author, "The Design and Analysis of the Clock Distribution Network for a 1.2-GHz Alpha Microprocessor," International Solid State Circuits Conference Digest of Technical Papers, February 2001