Prepare and prosecute patent and trademark applications, primarily for global leaders in aerospace and semiconductor technologies.

Counsel on a wide variety of legal issues including IP, contracts, business, corporate, licensing, transactions, privacy, data security, cybersecurity, accessibility, trade, government procurement, and compliance; work with engineers, developers, and marketing to assess products and ideas for IP protection, manage IP portfolio, prepare/prosecute patent/trademark applications to protect inventions/marks, investigate IP enforcement; prepare/review/customize/negotiate contracts for transactions including NDAs, support services agreements, SoWs, and MSAs with wide variety of companies including multinational and global players; assist with launch of cloud/SaaS/IaaS implementation of products, including create agreements and policies for cloud services/SaaS implementation of products; create EULAs for software products; review open source licenses of components desired by company developers and assess risks entailed with including open source components in server/desktop/embedded/mobile software products; assist with creation and review of documentation, marketing materials, and other publications/communications; establish/maintain UL and CE certification of products; determine compliance with environmental and material content laws/regulations (e.g. RoHS, REACH, California Prop. 65, Conflict Minerals, etc.), interact with parties up and down the supply/business chain to report compliance with environmental/content laws/regulations, analyze privacy laws (e.g. GDPR, PIPEDA, Canada Privacy Act, Canadian provincial laws, CCPA) and determine actions needed to ensure/maintain compliance, create forms for/categorize products for/ensure compliance with trade statutes (e.g. USMCA, DFARS, FAR, ITAR, EAR), assist with distributor submissions to federal and state RFPs, investigate adding direct sales of services including reviewing sales tax consequences in multiple jurisdictions and services for assisting with collecting and submitting sales tax on behalf of company

Private practice working with multinational and domestic corporate clients, interacting with in-house counsel and inventorsPrepare, file, and prosecute U.S. patent applications in fields including power handling equipment and software, sensor technology, MEMS/semiconductor technology, thermoelectric climate control systems, gas turbines, medical imaging, digital image processing, assistive technology for the visually impaired, wind turbines, and ventilated flooring systems

Private practice working w/domestic, European, Japanese clientsPrepared, filed, prosecuted US/PCT patent applications, US trademark applications for large scale wind turbines, bottling, optical metrology, semiconductor packaging, electrophotography, digital image processing, runflat tires/wheels, optical gunsights, flooringWorked w/firms in India, Brazil, China, EuropeInstalled, managed, troubleshot, maintained, repaired LAN, personal computers, related accessories & equipment, websites

Counseled research groups, prep/pros, right to use/non-infringement studies in photoreceptor belt, digital imaging, color science, mechanical systems, internet, and computer software technologiesAssisted with/advocated for nascent research program that became $25M product programSecured coverage for tech now in most Xerox machinesCo-chaired Outside Counsel Team, selection of OC, streamlined OC interaction, liaison to largest OC firm Xerox employed, assigned cases to OCCreated/maintained Best Practices web site/start page for IP DeptWinNT/Mac/virtual NT workstation customization for use on NT network

Counseled a diverse client base, including manufacturers of space vehicle fuel control valves, water purifier, fire resistant safes, laser gun sights, laser pulse weapons, lithography equipment, and moreEvaluated client technologies/products for patentability, initial consultations, ordering/performing searches, analyzing search results, and preparing patentability opinions; prepared/prosecuted applications and non-infringement opinions based on client products vs. patents of othersEvaluated marks for registrability, including initial consultations, ordering/performing searches of registers, analyzing search results, and preparing opinions; prepared/prosecuted applicationsWhile practicing, evaluated/managed IT needs of the firm Maintained, troubleshot, and upgraded servers, client Macintosh computers, local area network, and Unix-based telephone system Resurrected server from hard drive crashesResearched, recommended, ordered, and installed equipment as necessary

Performed searches for inventions submitted by faculty of SUNY at BuffaloEvaluated results of searches to form and write patentability opinionsContacted companies to license inventions; Acted as liaison with patent counselMaintained Windows 3.11 installs

Read and understand patent applications. Devise search strategies, conduct searches, and evaluate claims for patentability over references found in search.Specific technology areas: electrohydraulic transmission control systems for automatic transmissions; differential and planetary gearing; motion conversion devices.