Paul Morico is the firmwide Deputy Department Chair of the Intellectual Property Section of Baker Botts. Mr. Morico also co-chairs the firm’s Energy IP Practice Group. Mr. Morico has broad experience in all areas of intellectual property litigation, including patent, trademark, copyright and trade secret litigation. He has tried cases in some of the most active patent venues in the United States and before the International Trade Commission.
He has also served as lead counsel in numerous district court actions and in actions before the Board of Patent Appeals and Interferences and the Patent Trial and Appeal Board. His patent office proceeding experience includes serving as lead counsel in interferences, inter partes reviews (its predecessor inter partes reexaminations), ex parte reexaminations and in reissues. He recently received a denial of a Petition for inter partes review on behalf of a patent owner concerning a critical patent owned by a major oil services client. He represents clients in disputes involving a variety of technologies that include mechanical devices, computer software, semiconductors, plant genetics, nanotechnology DNA sequencing and gene therapy-based cancer treatments.
Mr. Morico has over 20 years experience with energy and power-related technologies, including extensive experience with downhole drilling and seismic tools; fracturing; subsea wellheads; risers; on and offshore platforms; on and offshore LNG production facilities; subsea umbilicals; on and offshore pipelines; heavy and light gas turbine engines; and alternative power sources for oil and gas recovery systems.
Mr. Morico also has significant experience in litigating matters in the biotechnology area, including bio-nanopores, DNA sequencing, plant genetics and gene-therapy based cancer treatments. He has represented start-up companies in this field, established companies, universities and medical institutions.
Mr. Morico also over 25 years experience in patent portfolio development and management, and has practiced extensively before the United States Patent and Trademark Office in an equally wide array of technologies. He has broad experience in conducting product clearance evaluations and managing intellectual property-related transactions, including counseling clients on licensing and transfers of intellectual property and on intellectual property aspects of corporate transactions, including conducting related due diligence reviews.
He had the honor of representing a consortium of Malaysian companies investigating various technologies for development in Malaysia in a project initiated by the Malaysian prime minister. Mr. Morico also has experience testifying in connection with his representation of clients before the United States Patent and Trademark Office and in connection with the rendering of legal opinions.