​​​​​​STACY MATULIS



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  • ​Florida licensed attorney with over 20 years of experience, licensed to practice before the United States Patent and Trademark Office. 
  • Significant intellectual property experience, including federal court litigation, patent and trademark prosecution, and licensing. 
  • Served as Executive Director of Legal Affairs for a publicly traded corporation - responsible for all contracts, intellectual property, litigation, employment issues, shareholder disputes, state taxation issues, regulatory matters, and acquisitions.
  • Electrical Engineer (B.S.E.E.) with seven years of experience -- including defense contracting and large municipality transportation system contracting -- worked on many large requests for proposals.
  • Counsel business clients in contractual, Intellectual Property (IP), unfair competition, employment, acquisition, business formation, assets, and product liability matters. 
  • Extensive experience negotiating and drafting a large variety of Agreements including distribution, services, allocation of IP rights, license, assignment, employment, independent contractor, web site terms of use, and software development Agreements.  
  • Extensive experience providing patent, copyright, and trademark infringement analyses.
  • Extensive experience prosecuting patent and trademark applications, including negotiating successfully with U.S. Patent and Trademark Office examiners.
  • Extensive experience handling disputes and lawsuits involving IP, contracts, unfair competition, and employment (on behalf of employer). Skilled in resolving conflict and avoiding litigation.
  • Retained by other firms to assist with legal strategy in patent enforcement, trade secret, unfair competition, and trademark infringement litigation, as well as drafting of IP licenses and assignments.
  • ​​Insurance defense and product liability litigation and trial work.





OWNER, MATULIS LAW & MEDIATION Serving businesses as outside general counsel and litigation counsel -  based in Tampa Bay, Florida  (2015 - Present). 

 OWNERLAW OFFICE OF STACY MATULIS - Sole practitioner serving as general and intellectual property counsel to a variety of privately-owned businesses – based in Tampa Bay, Florida (2004 – 2015). 

Counseled business clients, negotiated on behalf of clients, and drafted documents and legal communications, including: complex contracts; intellectual property acquisition, development, protection, and pre-suit enforcement; unfair competition; employment; business acquisition; business formation; product liability, regulation, and Proposition 65.  Provided patent, copyright, and trademark infringement analyses. Prosecuted patent and trademark applications.  Merged with Law Office of James Matulis in 2015.

FOWLER WHITE BOGGS BANKER, P.A.  (One of Florida’s oldest and largest law firms which has since divided into smaller firms) - Tampa, Florida  (1996 – 2001).
Insurance defense and product liability litigation and trial work for first three years; transitioned to IP department after becoming Registered Patent Attorney licensed to practice before the United States Patent and Trademark Office in 2000.  Recruited for in-house position in 2001.






​​Executive Director of Legal Affairs, Catalina Marketing, Inc. (Publicly traded company that innovated computer-based point of sale marketing hardware and software) - St. Petersburg, Florida (2001 – 2004).
  • Reported to CFO; Managed extensive international IP portfolio, including over 75 patents and over 200 trademarks. Hired and managed all outside counsel and internal Legal Department.  Responsible for legal budget and supervising staff attorney and paralegal.
  • Responsible for all contract negotiation and drafting, including contracts with customers, suppliers, vendors, IT providers, professional services firms, independent contractors, employees, and insurers.
  • Worked closely with account managers to modify base contracts with customers as required to secure the business, negotiated terms with customers, and protected Catalina legally while preserving business relationships.  Streamlined the customer contract process.
  • Managed all litigation, including patent litigation, trademark disputes, employment litigation, state tax litigation, arbitrations of earn-out agreement disputes with former owners of acquired businesses, and contract disputes. 
  • Worked closely with outside counsel to control litigation strategies and costs.  Convinced CFO to appeal adverse Michigan state tax appellate case to the Michigan Supreme Court and won reversal that prevented Michigan and discouraged other states from treating Catalina’s targeted marketing services as taxable mixed services and goods.




Stetson University College of Law (Florida’s oldest law school, repeatedly recognized nationally for its excellence in advocacy and legal writing) - Gulfport, Florida  (1996).

Graduated with Highest Honors;  Associate Editor, Stetson Law Review (scholarly publication); Winner of Moot Court competition in final year

Southern Illinois University - Bachelor of Science in Electrical Engineering (1986).

Graduated with Highest Honors; Vice-President  of Electrical Engineering Honor Society



     Law Firm Experience

  

   Summary of Qualifications


     Education

  

    In-House Counsel Experience