Qualifications: U.S. Patent Attorney and Attorney at Law
PRACTICE AREAS AND INDUSTRIES SERVED
Carlyn Burton’s practice encompasses all aspects of intellectual property law including patent preparation and prosecution, IP litigation, validity and infringement opinions, agreements, and IP counseling in the fields of chemistry, materials science, and mechanical engineering, with an emphasis in oilfield technologies, specialty chemicals, polymers, nanotechnology, and pharmaceuticals.
Ms. Burton’s experience includes patent prosecution, counseling, and litigation in the chemical and mechanical arts. She has drafted and prosecuted hundreds of patent applications in various chemical, materials, and mechanical fields including, but not limited to, drilling fluids, downhole tools, nanotechnology, batteries, adhesives, polymer chemistry, ion exchange systems, materials development, metallurgy, and pharmaceuticals.
In the area of intellectual property counseling, Ms. Burton has prepared non-infringement and invalidity opinions; counseled clients on patent design-around strategies and the strength of patents in anticipation of litigation; developed and implemented global patent prosecution strategies for numerous patent families; and conducted intellectual property due diligence.
In the context of litigation, Ms. Burton has prepared complaints, answers, motions, responses to discovery, and participated in mediations, settlement conferences and hearings for various patent infringement cases and contract disputes before U.S. District Courts, and Section 337 investigations before the U.S. International Trade Commission. Specifically, Ms. Burton’s experience includes development and briefing of infringement (or non-infringement) positions, invalidity positions, and claim constructions for Markman hearings, as well as significant contributions to domestic industry and remedy strategy, analysis, and briefing before the ITC and Court of Appeals for the Federal Circuit.
Previously, Ms. Burton was a judicial intern for the U.S. District Court for the Southern District of Texas in the Court of the Honorable Judge David Hittner. Prior to law school, Ms. Burton conducted research in the fields of structural investigation of membrane proteins and protein denaturation and renaturation.
- J.D., University of Houston Law Center (2005)
- M.S., Chemistry, Emory University (2002)
- B.S., summa cum laude, Chemistry, Emory University (2002)
- State Bar of Texas
- Court of Appeals for the Federal Circuit
- United States District Court for the Southern District of Texas
- United States District Court for the Eastern District of Texas
- United States District Court for the Western District of Texas
- United States Patent and Trademark Office
- “Texas Rising Stars,” Super Lawyers (2008-2010, 2017-2018)
- “Top Lawyer,” H Texas magazine (2011, 2016, 2017)
- “Professionals on the Fast Track,” H Texas magazine (2009)
- Co-author, “Pharmaceutical Patent Protection: the United States and Japan in Comparative Perspective,” Pharmaceutical Patent Analyst, Vol. 6, No. 1 (2017)
- Co-author, “First-to-invent versus first-to-file: impact of AIA,” Pharmaceutical Patent Analyst, Vol. 3, No. 4 (2014)
- “The perils of patent trolling”, Pharmaceutical Patent Analyst, Vol. 2, No. 6 (2013)
- Co-author, “The ITC as an attractive patent litigation forum for the biotechnology and pharmaceutical industry,” Pharmaceutical Patent Analyst, Vol. 2, No. 2 (2013)
- Co-author, “Sulfhydryl Reactive Analogs of Dopamine,” Soc. Neurosci. Abstr., Vol. 27, Prog. No. 479.5 (2001)
- “Use of Pilot Programs at the Patent Office – What to Use That You Aren’t Presently Using,” 30th Annual Advanced IP Course, TexasBarCLE (2017).
- Conference Chair and Presenter, “32nd Annual Institute on Intellectual Property & Information Law,” Galveston, Texas (2016)
- “IP 101: What every small business should know about intellectual property”, 252nd National Meeting of the American Chemical Society, Philadelphia, Pennsylvania (2016)
- “IP Budget Best Practices,” CLE organized by Dennemeyer Group, Hotel Derek, Houston, Texas (2016)
- “Survey of Disputes Involving GMO Patent Rights,” 250th National Meeting of the American Chemical Society, Boston, Massachusetts, (2015)
- Inventor beware: potential pitfalls that every inventor should understand” 248th National Meeting of the American Chemical Society, San Francisco, California (2014)
- “Enforcement of Your IP Rights, Now What?” 246th National Meeting of the American Chemical Society, Indianapolis, Indiana (2013)
- “The Effect of IP on R&D in the Alternative Energy Industry,” 245th National Meeting of the American Chemical Society, New Orleans, Louisiana (2013)
- “‘America Invents Act’ U.S. Patent Reform 2011” American Chemical Society’s 67th Southwest Regional Meeting, Austin, Texas (2011)
- “Patent Law Reform: Where Do We Stand and How Will it Affect Small Businesses?” American Chemical Society’s Fall 2011 242nd National Meeting and Exposition, Denver, Colorado (2011)
- “Buyer Beware: The 24 Month Patent Application Pilot Program,” American Chemical Society’s SWRM/SERMACS Annual Meeting, New Orleans, Louisiana (2010)
- “Timing is Everything: When to File a Patent Application,” American Chemical Society’s Fall 2010 National Meeting and Exposition, Boston, Massachusetts (2010)
- “Enablement in the Chemical Arts,” American Chemical Society’s 61st Southwest Regional Meeting, San Juan, Puerto Rico (2009)
- “I signed WHAT?: What to Consider when Entering into Consulting or Other Agreements,” American Chemical Society’s Division of Small Businesses’ symposium on small business startups, San Juan, Puerto Rico (2009)
- “Intellectual Property for Scientists,” American Chemical Society’s Greater Houston Section meeting, Houston, Texas (2009)
- “Using IP to Fuel Your Business,” American Chemical Society’s Great Lakes Regional Meeting, Lincolnshire, Illinois (2009)
- “Using IP to Fuel Your Business,” American Chemical Society’s 13th Annual Green Chemistry and Engineering Conference, College Park, Maryland (2009)
PROFESSIONAL ACTIVITIES AND MEMBERSHIPS
- Emory Alumni Board
- American Chemical Society, Committee on Patents and Related Matters and Chemical Innovation and Entrepreneurship Council Representative
- American Intellectual Property Law Association
- Houston Intellectual Property Law Association, Board of Directors
- Intellectual Property Owner’s Association, Women in IP Committee; former member of the European Practice Committee
- Licensing Executive Society