Patent Counsel
CurrentResponsible for supervising seven outside law firms and approximately twelve patent attorneys and agents. Determine budgets and assign disclosures to outside firms. Manage a $1.4M patent (in 2012) budget. Review billings from outside counsel, investigate questionable bills and recommend action to General Counsel. Approve all domestic and PCT patent applications, office action responses, appeals to the Board of Patent Appeals and Interferences (BPA&I) for technical accuracy, legal accuracy, clarity and strongest argument. Coordinate the technical review by the inventor. Application review covered statutory subject matter, formalities, technical content, claims and claim scope. Ensure the breadth of the patent application is as broad as possible consistent with the prior art and the inventor’s disclosure, even if not explicit in the disclosure. Help outside counsel resolve technical and legal issues.Wrote a successful ex parte reexamination request in Antennas; wrote 80% of a successful ex parte reexamination request for an acoustic membrane. Directed and contributed to two pre-issuance submissions under the AIA.Represent HRL Legal on the Invention Evaluation Committee, identify patentability issues and contribute to HRL’s patent strategy. File patent applications via the PTO’s Electronic Filing System (EFS). Work with the Lab Directors to develop a patent strategy and to help market HRL intellectual property.Technology areas: antennas, circuits, artificial impedance surfaces, semiconductor lasers, semiconductor fabrication, optical devices and photo sensitive materials, mm and micro wave RF, software and method inventions in image processing, robotic control, internet applications, and nanotech structures.Report to the General Counsel: Provide objective analysis of patentability, infringement,and licensing issues. Back up the General Counsel for contract, FAR and export issues. Prepared opinion memos to senior management on indemnity issues.
