Marcus G. Theodore, P.C. - Salt Lake City, Utah

Career Summary

Over 35 years of legal and managerial experience, including 10 years in the electrical power generation field, that delivered measurable business results in a diverse group of industrial and intellectual property companies and clients ranging from energy generation companies to public start-up companies. Track record includes operating a full service intellectual property law firm and developing and operating various technical joint businesses with small and Fortune 500 companies. Specifically, performed: 1) federal, state, and local project permitting, such as FERC compliance, EPA air emissions permits, DOE fuel exemptions, environmental impact statements to meet pre and post federal and state income tax project financing objectives, 2) SEC registration, operation, and merger of my public company with a South American optical fiber company now owned by AT&T South America, 3) drafting and acquiring key patents, trademarks, and copyrights to support diverse ongoing business operations, and 4) litigating a wide variety of business, real estate, intellectual property, court, administrative cases and environmental cases associated with real estate and technology development related to start-up companies primarily in the wastewater treatment and energy fields of electric power and steam co-generation.

Key Skills

Multi-faceted legal and managerial experience that delivers projects within project financing guidelines to comply with state and federal regulatory agencies, such as FERC, DOE, EPA, and the I.R.S.
Project negotiator and coordinator establishing joint venture teams of diverse technical, financial and engineering skills to complete projects in accordance with project timelines.
Knowledge/expertise in a wide variety of financial, chemical and technical disciplines. These disciplines include financial analysis and budgeting, technology and patent evaluations and applications for patents, trademarks and copyrights covering the key project components, permitting strategies, team development and funding, litigation strategies to effectuate project timelines, business plans, funding summaries, and project administration.

Legal Advising

Operated a specialty law firm since 1982 providing legal services to a wide variety of large and small clients emphasizing all phases of technology law, drafting and prosecuting patents, trademarks, copyrights, licensing, IP litigation, business advice, environmental clean-up litigation, real estate and technology development related to start-up companies primarily in the water treatment and energy fields associated with electric power and steam co-generation.
Represented for eight years various agencies of Salt Lake County, the largest County in the State of Utah, including litigation trials and appeals to interpret constitutional and municipal compliance issues.
Litigated for three years at Trask & Britt, a Salt Lake City patent firm, trying patent infringement, and commercial litigation. I also drafted a wide variety of patents in differing disciplines for large and small clients.

Professional Organizations

Admitted to practice before U.S. Supreme Court in 1978
Admitted to practice before the Utah Supreme Court in 1969
Admitted to practice before U.S. Patent Office in 1973
Admitted to practice before U.S. Tax Court 1973
Admitted to practice before U.S. Court of Appeals (Federal Cir.) 1982
Admitted to practice before U.S. Court of Appeals (9th Cir.) 1979
Admitted to practice before U.S. Court of Appeals (10th Cir.) 2001
Admitted to practice before U.S. District Court (10th Cir.) 1969
Admitted to practice before the Utah Public Service Commission
Admitted to practice before the Idaho Public Service Commission
Admitted to practice before the California Energy Commission
Member of the Utah Bar Association since 1969
Former Member of the American Bar Association
Member of the Salt Lake County Bar Association
Licensed Real Estate Broker in the State of Utah

Educational Record

University of Utah College of Science, B.S., Chemistry, 1967
University of Utah CoI1ege of Law, J.D., 1969
Baylor University 1971, started the M.B.A. program
University of Utah College of Business, M.B.A., 1977
University of Utah College of Business, B.S., Finance, 1980
Olympus High School, Salt Lake City, Utah 1963

Work Experience

1982-Present
President and sole stockholder of Marcus G. Theodore, P.C., a professional corporation emphasizing all phases of technology law, patents, trademarks, copyrights, licensing, litigation, etc., and environmental litigation associated with real estate, real estate and technology development related to start-up companies primarily in the water treatment and energy fields associated with electric power and steam co-generation.

1978-82
Associated with Trask & Britt, a.k.a. TraskBritt, an a.v. rated patent firm in Salt Lake City, Utah, where I was primarily responsible for patent litigation involving all phases of intellectual property, including product liability, unfair competition, patents, trademarks, and antitrust. Approximately one half of my practice was related to commercial law, with an emphasis on real estate.

1971-79
Deputy County Attorney, Civil Division, Salt Lake County Attorney's Office.
My duties encompassed general corporate practice, including at least a year's experience in the following areas:

Collective bargaining with the 3,500 member UPEA Union, and evaluating deferred compensation programs for Salt Lake County employees (ERISA).
Advising the Business Licensing and Health Department in license revocation hearings, and redrafting business licensing ordinances of Salt Lake County to conform to due process standards, and interstate commerce requirements, and to raise additional revenue.
Representing Salt Lake County's in excess of one million dollar gas and electric utility accounts in the 1976-77 rate hearings before the Utah Public Service Commission, where the office successfully reversed a major electric utility's rate increase, and overturned the natural gas company's spin-off of its $270 million dollar gas exploration program without compensating the rate payers.
Advising the Salt Palace Civic Auditorium and Hansen Planetarium on copyright and trademark matters.
Reviewing the financing practices of the Salt Lake County Library Board, and the Salt Lake County Treasurer. The first study recommended a shift of the Library's three million dollar cash flow to generate construction funds rather than incurring high interest municipal lease financing rates. The second study of the rate of return on municipal portfolios was adopted in the successful defense of Granite School District's claim for damages for delayed transfers of their tax funds.
Litigating condemnation suits, workmen’s compensation claims, wage claims, appellate procedures reviewing municipal decisions by the Board of County Commissioners, the defense of county ordinances through the Supreme Court Appeal Process, enforcing interstate IV-D Child Support URESA petitions and miscellaneous collection matters.
Director of a statewide association of county prosecutors to prosecute civil and criminal Medicaid Fraud cases, and anti-trust price fixing cases.

1970-71
Legal Clerk, US Army, assigned to process and prepare courts martial, discharges, and company punishments.

Fall 1969
Legal Clerk for Chief Justice J. Allan Crockett of the Utah Supreme Court

Summers 1967, 68
Employed as a chemist at the Kennecott Copper Corporation Research Center at the University of Utah, where I worked on an electrolytic deposition of copper power project and in the x-ray analytical laboratory.

1963-67
Employed as a part-time clerk in Sam Weller's Zion's Book Store, Salt Lake City, Utah.