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Background

Terry Stalford is a Principal in the Dallas office of Fish & Richardson P.C. His practice emphases US and international patent portfolio development, patent litigation, infringement risk management, and licensing in the software, communications, and energy fields. He also provides general intellectual property counseling on other strategic issues, including patent mapping, patent categorization, and industry benchmarking.

Mr. Stalford’s clients are among the top technology companies in the world. He works with his clients to build world-class patent portfolios and navigate complex litigation issues across a wide range of technologies, including wireless communications, telecommunications networks, software, AI and machine learning, blockchain, cloud computing and multi-tenant environments, semiconductors, and energy. His work on behalf of his clients has been widely recognized; for example, the Patent Scorecard published by the Wall Street Journal ranked a patent portfolio that Mr. Stalford built with a small client as one of the strongest in the energy and environmental industries. He also regularly leads public conferences and in-house training events at client sites touching on opinions, licensing, patent prosecution, post-grant proceedings, and patent litigation.

Mr. Stalford is committed to using his practice to improve the lives of others through technological innovation. For the past several years, he has provided pro bono legal representation to Workshops for Warriors, a charitable organization that trains combat veterans for post-military careers in advanced manufacturing, and LIMBS International, which provides affordable, sustainable prosthetic solutions to individuals in developing countries. He also represents financially under-resourced independent inventors and small businesses in USPTO proceedings through the Federal Circuit Bar Association PTO Pro Bono program.

Before entering the practice of law, Mr. Stalford had a distinguished career in the engineering field. He worked as a process/facility engineer for Hercules, where he programmed the control system for the facility’s fully-automated processes, as well as designed the facilities and processes for a $35-million capital modernization project. He also served as a manager for Hercules, where he set and enforced management policy and ensured safety, production, and quality control.

Education

University of Georgia School of Law 1993
J.D.
Editor, Journal of Intellectual Property Law
magna cum laude, Order of the Coif


University of Oklahoma 1986
Engineering, B.S.

Admissions

  • U.S. Patent and Trademark Office 1995
  • Georgia 1993
  • Texas 1999

Other Distinctions

Named a “Texas Trailblazer,” Texas Lawyer (2019)

Recognized in IAM Patent 1000, Texas, Prosecution (2014-2019).

Recognized in The National Law Journal, Trailblazers Energy & Environmental (2017).

Named a Texas “SuperLawyer,” (2012-2018).

Selected publications, speeches, and presentations

Claiming AI in the US and in Europe, client presentation, Shenzhen, China and Hangzhou, China, September 2019

Foreign Intellectual Property Rights, Hangzhou Future Sci-Tech City (STC), Hangzhou, China, September 2017.

Reducing Risk from Patent Litigation in the USA, Shenzhen IP Bureau, Shenzhen, China, 2015.

How to Hold the Value in Your Portfolio as US Law Erodes Patent Scope and Raises Bars to Enforcement, TexasBarCLE 11th Annual Course Advanced Patent Litigation, Texas, July 2015.

“Rainmaker Q&A: Fish & Richardson’s Terry Stalford,” Law360, August 29, 2013

Innovation and Intellectual Property: China and the United States, Federal Circuit Bar Association International Series, Renmin University, Beijing, China, 2012

Working Effectively With the United States Patent and Trademark Office, Las Vegas, NV, March 2007.

Intellectual Property: Uses and Safeguards, Executive MBA program, Business School of Centenary College, Shreveport, LA, April 2006.

Comments on the USPTO Rule Proposals Published January 3, 2006, Japan, May 2006.

Opinions of Counsel, United States Patent Law and Litigation, Munich, December 2005.

Patent Reform and Legislative Changes on the Horizon: What You Need to Know About the Changing Patent Process & IP Protection, Dallas, TX, October 2005.

Standardization in Optical Networking, United States Patent and Trademark Office Technology Fair, June 2003.

Experience

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