• Domestic and Int’l Patent Application Preparation and Prosecution in the Electrical, Electro-Mechanical, Mechanical, Medical, Fiber Optics, Network Systems, Communication Systems, Integrated Circuit, and Software Arts (including data analysis and artificial intelligence)• Trademark Application Preparation and Prosecution

• Preparation and prosecution of patent applications in the electrical, mechanical, medical, optics, integrated circuits and software arts in both the United States and internationally.• Research and Preparation of patent clearance opinions, non-infringement opinions, and product design-arounds.• Preparation of Intellectual Property Related agreements including license agreements, joint development agreements, research agreements, confidentiality agreements, and assignments.

• Provided critical, strategic product design guidance/support, from product inception to launch, directly to product design engineers based on competitive data (patentability assessment, options for design alternatives, design-arounds, etc.) reducing company liability potential for patent infringement/increasing company potential for issued patents.• Worked directly with engineers, managers, and executives to provide IP guidance including gathering of invention disclosures; directed outside counsel in preparing and prosecuting both US and international patent applications.• Prepared/negotiated licensing, joint development, and non-disclosure agreements ensuring company’s protection of its intellectual property.• Key member of due diligence acquisition/divestiture teams securing smooth transfer of intellectual property portfolios.• Created/led training courses for all company employees on intellectual property basics (awareness of risk with 3rd party consultants, marking, etc.); created/led focused patent training courses for R&D employees effecting awareness and compliance with company intellectual property policies.• Performed pre-litigation patent infringement analysis establishing baseline confidence in non-infringement/infringement position; managed outside patent infringement litigators controlling costs and directing litigation course most suitable to company’s interest; advised company executives on patent rights and litigation options.• Established company procedures for selecting, clearing and registering trademarks providing intellectual property protection for company’s new and existing brands; instituted company-wide trademark usage guide.• Managed patent, trademark, trade secret and copyright portfolios supporting company objectives.