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0-5 years of experience
Prepared and prosecuted patent applications in various technologies, including software algorithms, semiconductors, optics, image processing and display arts
- Researched and analyzed third party claims, drafting memoranda on design alternatives
- Negotiated CRADA agreements and drafted waiver for IP Rights
- Counseled clients on developing broad patent portfolios and licensing strategies
- Classified patent portfolio and modeled asset value for subsequent sale
0-5 years of experience
Prosecuted both domestic and foreign, chemical and mechanical patent applications
- Prepared instruction letters to foreign associates in response to International Patent Office Actions
- Drafted amendments with the USPTO in response to their Office Actions
- Conducted patentability evaluations
0-5 years of experience
Counseled clients concerning corporate and intellectual property issues including business and patent licensing agreements.
- Conducted contract negotiations to purchase licensed/patented products.
- Wrote patent and trademark applications and Patent and Trademark Office actions in the areas of mechanical engineering.
- Drafted and participated in the analysis of patentability opinions.
0-5 years of experience
Conducted patent prosecution in technology areas such as CMP and wafer processing, software, consumer electronics and medical devices.
- Negotiated, prepared and reviewed technology transfer agreements, license agreements, confidentiality agreements and software agreements.
- Prepared validity and patentability opinions.
- Supported patent and trademark litigation by drafting motions and pleadings and participating in discovery.
0-5 years of experience
Prepared and prosecuted patent applications, in the U.S. and internationally in electro-mechanical technology areas, with an emphasis on the medical device industry
- Counseled clients on intellectual property strategy matters
- Conducted prior art and state of the art searches in order to analyze the competitive field and identify patentable
- Analyzed patent portfolios for merger and acquisition opportunities, including identifying potential acquisition
- Performed pre-litigation due diligence and support client litigation as required
0-5 years of experience
- Responsible for drafting Electrical Engineering based applications.
- Interviewed engineers to establish patentable material.
- Educated engineers regarding patenting limitations such as prior art, novelty, and non-obviousness.
- Researched prior art, drafted patentability and infringement opinions, and prosecuted patent applications for Fortune 100 technology firms.
- Counseled corporate and internal clients regarding patent portfolio strategies and legal implications.
0-5 years of experience
Drafted applications mainly in the electrical fields including telecommunications, computer, network, business methods and mechanical subject matter.
- Performed patent prosecution as outside counsel for multinational corporations prosecuting device, system, method and Beauregard claims as necessary to optimize patent coverage.
- Prepared and file 10-12 responses per month to office actions from the USPTO out of a portfolio of approximately 200 active cases.
- Prepared and filed numerous Information Disclosure Statements including complex related-case situations.
- Drafted and filed appeals and Pre-Appeal Board arguments.
- Conducted regular and routine interviews with the Examiners at the USPTO concerning various aspects of prosecution.
- Conducted inventor/client disclosure interviews.
- Prosecuted trademark oppositions.
0-5 years of experience
- Prepared and prosecuted domestic and foreign patent applications with emphasis on electrical, mechanical, and chemical technologies.
- Provided patentability searches and opinions.
- Counseled clients on acquisition and enforcement of intellectual property rights.
- Assisted senior counsel on patent litigation and licensing.
0-5 years of experience
- Performed e-Discovery for a patent infringement and antitrust litigation in the plant sciences/genetic engineering area including searching and analyzing produced documents and performing privilege review.
- Prepared several offensive and defensive deposition preparations including reviewing several deposition transcripts and working closely with the partners and associates.
- Conducted extensive legal and technical research for expert reports concerning inequitable conduct and invalidity issues.
- Performed significant research to support numerous motions to dismiss and to compel.
0-5 years of experience
- Drafted patent applications, and handled the daily patent prosecution matters of these and applications drafted by others before the United States Patent and Trademark Office and in foreign patent offices
- Assisted clients in designing non-infringing products in light of enforceable patents of others
- Counseled clients regarding the patentability of their designs, and the scope of patent protection that they may be afforded under current patent laws
- Supervised and directed paralegals in daily tasks, including preparing patent assignments and filings with the United States Patent and Trademark Office
- Performed extensive searches for right-to-use and patentability opinions
0-5 years of experience
Conducted invention excavation and patent searching for 400+ inventions
- Developed detailed claim strategies for 250+ new patent applications
- Developed response strategies for 350+ office actions
- Conditioned JP priority patent applications for US filing
- Developed patent portfolios in key technical areas (Safety, Fuel Cell, Autonomous Vehicle)
0-5 years of experience
Prepared and prosecuted patent applications
- Provided guidance regarding the patentability of inventions
- Provided support for invention disclosure reviews of computer hardware (mainframe architecture, networking, cryptography, test) and software (emulation, operating systems) inventions
- Managed and reviewed outside counsel preparation and prosecution of patent applications
- Provided support for patent licensing, contracts, joint development agreements, non-disclosure agreements, open source, publications, and litigation
- Resolved trademark issues including trademark naming reviews and trademark enforcement
0-5 years of experience
Assisted clients in procuring patent protection for inventions in software, electrical, and mechanical technologies.
- Invalidity and infringement contentions
- Due diligence, including invalidity, infringement, and design-around analysis
- Worked with, and prepared Expert Witnesses for trial
- Advised clients regarding patents, extent of patent protection, and requirements for patentability
- Prepared, filed, and prosecuted patent applications before the USPTO
- Worked with inventors to obtain invention disclosures with an eye to novelty and non-obviousness
0-5 years of experience
- Performed freedom to operate and patentability searches and provided opinions to business and technology leaders.
- Drafted domestic and PCT patent applications for multiple business groups including engineering polymers, intermediate chemicals and specialty chemicals.
- Responded to USPTO and international (EP, China, BR, etc.) office action for various business groups including engineering polymers, intermediate chemicals, specialty chemicals, polymers and resins, and performance materials.
- Performed mapping studies to determine current stare of the art for various technology areas.
- Helped to design and maintain various intellectual property databases (engineering polymers, intermediate chemicals and specialty chemicals) to organize and compare new and existing product formulations with prior art references.
- Supported licensing programs by working with technical experts to identify patent opportunities and filing domestic and international (PCT, EP, China, etc.) applications.
0-5 years of experience
Responsible for biotech and medical device patent prosecution for various domestic clients.
- Responsible for daily client management of two major domestic clients and one foreign client.
- Significant experience in domestic and foreign trademark prosecution.
- Assisted in training and primary supervision of other IP associates in satellite offices.
10+ years of experience
- Procured strong US and PCT-based patents on high-technology inventions.
- Performed patent drafting, prosecution, infringement analysis, and opinion work.
- Advised on Intellectual Property (IP) strategy and licensing issues.
- Acquired particular expertise in advanced controls, digital hardware, semiconductor memories, and wireless communication systems.
0-5 years of experience
- Transcribed dictation and manually edited legal documents
- Prepared formal papers to file and assist in filing for trademark, copyright, and patents with the USPTO as directed by attorney
- Maintained legal files
- Tracked attorney time
- Invoiced clients and contacted them as needed for payment
0-5 years of experience
- Prosecuted all aspects of utility patent applications before the U.S. Patent and Trademark Office (USPTO).
- Assisted in inter partes reexamination of patents.
- Assisted in opposition proceedings of foreign patent applications.
- Conducted legal research on various intellectual property issues.
0-5 years of experience
- Provided technical assistance in filing of innovations and trademarks.
- Responsible for various administrative functions.
- Translated documents (English to Russian and Russian to English).
6-10 years of experience
Managing Electrical Department
- Performing patent counseling
- Performing patent litigation before Korean Patent Court
- Performing patent prosecution before Korean Intellectual Property Office
0-5 years of experience
Served as principal intellectual property counsel to PARC’s Systems and Practices Laboratory, counseling lab managers and scientists on various legal issues, including patent, copyright, licensing, and compliance matters.
- Prepared and prosecuted patent applications for software and Internet-related inventions.
- Developed patent portfolios for software and Internet-related technologies.
- Counseled Japanese researchers of Fuji-Xerox Palo Alto Laboratory on intellectual property issues.
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Patent Attorney
Last edited by: Gabriela Barcenas, CONTENT STRATEGIST -
Gabriela Barcenas
CONTENT STRATEGISTGabriela is a Certified Professional Resume Writer (CPRW) and career adviser. With 10 years of digital media experience and five years of resume writing expertise, her publication history includes fashion, education, travel, social justice, equitable design and career advice.
