Lawyer Bio : Jack B. Hicks

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Jack B. Hicks

Greensboro

Jack Hicks has significant experience in counseling clients in all areas of patent, trademark, copyright and trade secret law. A licensed patent attorney, Jack assists clients in determining the type and scope of intellectual property protection that is best suited for their business goals. A substantial portion of his practice includes the preparation and prosecution of U.S. and foreign patent and trademark applications, as well as litigation in various jurisdictions and forums. He also has served as a Mediator for intellectual property disputes.

Named as one of The Best Lawyers in America, Jack counsels clients in a wide range of industries, including those involving the general mechanical, electro-mechanical, manufacturing processes, chemical and “business methods” arts. Specific industries in which Jack is active include aerospace, pharmaceutical, electronics, home furnishings (including furniture), banking, computer software, leather goods, publishing, telecommunications and textiles.
 
An award winning author, Jack’s recognized expertise in his field leads to frequent invitations to speak or write on legal issues to intellectual property, licensing and general attorneys, as well as industry trade associations and universities. Jack will serve as the patent panelist at the upcoming Carolina Nanotechnology Commercialization Conferenceto be held March 31 – April 1, 2010, in Greensboro, NC.  Jack also serves as an Adjunct Professor at Elon University School of Law, teaching Intellectual Property Law.
 
Prior to working as an attorney, Jack was employed as a design engineer on airborne radar and optics applications by Texas Instruments in Dallas, Texas. In 1987, he joined the Business Litigation Group of Womble Carlyle. In 1989, he became a licensed patent attorney, joining the patent boutique firm of Rhodes, Coats & Bennett in March 1993 and then Womble Carlyle again in July 2001.
 
Honors and Awards
 
The Best Lawyers in America; North Carolina Super Lawyers; The Legal Elite, Business North Carolina Magazine.
 
Teaching Experience
 
Adjunct Professor, Elon University School of Law, Intellectual Property Law;
Guest Lecturer, University of Virginia School of Engineering and Applied Sciences, Financial Aspects of Engineering, and Invention and Design Classes, Charlottesville, VA; Guest Lecturer, High Point University, Home Furnishings Marketing Class, High Point, NC.
 
Jack is a co-author of the Womble Carlyle Furniture Law Blog.

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Professional Activities

Board Member of the American Home Furnishings Alliance Suppliers Division (2004-2008).
 
Vice Chair of the Industrial Design Committee of the American Intellectual Property Law Association (2006-2008).
 
Bar Associations: North Carolina Bar Association, Councils of the Intellectual Property Section and Business Law Section, Technology Liaison, 1998-2002; Carolina Patent, Trademark and Copyright Lawyers Association, Board of Managers, 1995-1998; International Trademark Association; Licensing Executive Society; American Society of Mechanical Engineers.
 
Admitted to the bar 1987, North Carolina. Admitted to practice before the U.S. District Court, Middle and Eastern Districts of North Carolina; U.S. Court of Appeals for the Federal Circuit; registered to practice before U.S. Patent and Trademark Office.

Education

B.S., Mechanical Engineering, 1979, University of Virginia, with high distinction; Tau Beta Pi; Pi Tau Sigma; Sigma Xi; General Electric Foundation Merit Scholarship; American Society of Mechanical Engineers; Raven Society; Sigma Chi.
 
M.S., Mechanical Engineering, 1980, University of Virginia.
 
J.D., 1987, University of Texas at Austin School of Law, with honors; Associate Editor, Texas Law Review; Order of the Coif; Board of Advocates.

Prior Legal Experience

Partner, Rhodes & Mason, PLLC, Greensboro, NC, 1996-2001; Associate, Rhodes, Coats & Bennett, PLLC, Greensboro, NC, 1993-1996; Associate, Womble Carlyle Sandridge & Rice, PLLC, Winston-Salem, NC, 1987-1993.

Prior Business Experience

Design Engineer, Texas Instruments, Dallas, TX, 1980-1984.

Designed and analyzed thermal and vibrations characteristics for high-density electronics packaging for optics, thermal imaging and radar avionics.

Publications

"PATENTING NANOTECHNOLOGY: Is there Really Plenty of Room at the Bottom?” IP Links, NCBA Intellectual Property Law Section Newsletter, Section Vol. 21, No. 1, March 2010 (co-author with Gregory Grissett, and Bernard A. Brown, II*)
 
"Will Design Piracy Prohibition Act Send Designer Copycats Out of Style? An Analysis of the Current and Future State of Intellectual Property Protection for Fashion Design” IP Links, NCBA Intellectual Property Law Section Newsletter, Section Vol. 21, No. 1, November 2009 (co-author with Tiffani Otey).
 
Patent Reform 2007: Only Certain "New" Designs Receive Protection, Furniture Executive, American Home Furnishings Alliance (November 30, 2007) (co-author with Robert D. Mason, Jr.).
 
"Patent Reform 2007: Important Changes are Coming for U.S. Patent Law," Furniture Executive, American Home Furnishings Alliance (November 2, 2007) (co-author with Martina Tyreus).
 
"Challenges to Protecting Novel Designs - Only Certain Designs Receive Protection," IP Links, NCBA Intellectual Property Law Section, Section Vol. 19, No. 1, November 2007 (co-author with Robert D. Mason, Jr.).
 
“The Materiality Standard for Intellectual Property Disclosings: How Pending is That Patent?” Notes Bearing Interest - Newsletter of the NCBA’s Business Law Section, Vol. 23, No. 1, February 2002 (co-author with Robert S. Thomas).

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Presentations

Jack will serve as the patent panelist at the upcoming Carolina Nanotechnology Commercialization Conference to be held March 31 – April 1, 2010, in Greensboro, NC.  Information on this event can be found at http://www.ncscitech.com/ncncc/index.htm.

 
“Getting a Firm Grasp on Obviousness and Overcoming Office Action Rejections,” September 22-23, 2008, ACI’s USPTO Boot Camp: Patent Edition, Washington, DC. (invited)
 
“Development on International Design Registration – Geneva Act Implementation,” Industrial Design Committee Joint Meeting, May 14, 2008, AIPLA Spring Meeting, Houston, TX.
 
“Is it Time for the U.S. to Adopt a Registration System for the Protection of the Appearance of Useful Articles?" AIPLA (Panel Moderator), October 18-20, 2007, AIPLA Annual Meeting, Washington, DC.
 
AIPLA Board Meeting Presentation: Fashion Protection Design Piracy Prohibition Act (H.R. 2033), July 19, 2007, Arlington, VA.


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Areas of Proficiency

  • Patent, Trademark and Copyright Law

Practice & Industry Teams

Articles

Publications

Case Studies

Events