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Yyyyyy x. yyyyyy

Results-Focused Leader Seeking Associate General Counsel Role


618 Jersey Avenue, #1 Xxxxxx, XXXXXX xxxxxx (xxx-xxx-xxxx


  • Dynamic Leader who offers talents in General Counsel of Global Patents and Trademarks; IP Filing, Prosecution, and Maintenance; IP Agreement Negotiations and Acquisitions; Senior-Level Management Counseling; and Patent Application Preparation, Analysis, and Prosecution, and exhibits an ability to see the big picture at all times.
  • Top Performer who can make decisions to reflect positively on in-house patent / intellectual property administrative initiatives in alignment with a company s vision, value, and goals to achieve desired key objectives.
  • Excellent Communicator who builds and sustains synergistic relationships with C-level executives, senior-level management, attorneys, inventors, engineers, regulatory agencies, and administrative staff; can excel within autonomous or collaborative environments; and consistently works to lead teams by example and with integrity.


Career Highlights


  Coordinated global IP filing, prosecution, and maintenance for Ortho Clinical Diagnostics, and counseled executives on product exclusivity, freedom to operate, and IP aspects of business development.

  Significantly increased overall new filings while aggressively reducing patent and trademark portfolios.

  Cost-effectively developed and negotiated agreements and licenses involving IP matters related to patents, including comprehensive IP license agreements, IP acquisitions, cross licenses, development agreements, research agreements, commercialization agreements, and settlement agreements.

  Regularly counseled senior-level management on licensing, patent enforcement, and other matters.

  Prepared and prosecuted patent applications for wide-ranging innovative technologies, along with leading results-generating teams and assisting in litigation matters related to patents and trade secrets.


Professional Synopsis


Ortho Clinical Diagnostics (f/k/a Johnson & Johnson Company), Raritan, XXXXXX 2002 Present


Associate General Counsel Patents Trademarks (2014 Present)

  Capitalize on the opportunity to lead forward-thinking counsel of global intellectual property matters, including handling patent and trademark procurement, counseling, and litigation for human in-vitro diagnostic business.

  Lead targeted decision-making among a top-performing team of five IP attorneys and staff across two sites, along with demonstrating sharp analytical abilities toward cost-effectively managing high-volume operational budgets.

  Coordinate and manage high-level global IP filing, prosecution, and maintenance efforts to achieve objectives.


Assistant General Counsel Patents (2002 2014)

  Strategically steered counsel concentrating on patent prosecution, including delivering high-quality counseling related to patents, intellectual property agreements, and due diligence in alignment with key legal goals.

  Prepared and prosecuted patent applications in areas of diagnostic instrumentation, including performing all algorithms and microfluidics and immunoassays, as well as conducting intellectual property due diligence for business transactions encompassing acquisition and divestiture of business units, new technologies, and products.

  Led product clearance investigations, and collaborated with inventors and engineers to facilitate introductions.

  Conducted comprehensive infringement and validity investigations, along with effectively preparing detailed opinions and counseling senior-level management personnel with respect to infringement and validity matters and further counseling senior-level management regarding all facets of licensing and patent enforcement efforts.

Yyyyyy x. yyyyyy

Results-Focused Leader Seeking Associate General Counsel Role


Page Two (xxx-xxx-xxxx


Professional Synopsis (continued)


Foley & Lardner, Washington, D.C. 1994 2002


Law Clerk Associate Senior Counsel

  Expertly prepared and prosecuted patent applications in the fields of polymers, small molecule pharmaceuticals, transdermal drug delivery, bone substitutes, medical devices and systems, and other innovative technologies.

  Applied strong leadership talents toward mentoring and managing a details-focused team of associates and patent agents in patent prosecution while assisting in diverse litigation matters related to patents and trade secrets.

  Optimized legal operations success by preparing opinions related to infringement and validity of patents.


United States Patent & Trademark Office, Alexandria, VA 1989 1994


Patent Examiner

  Played a vital role in examining technical patent applications in fields of semi-conductor etching, coating, glass making, and paper making by reviewing specifications and claims, as well as comprehensively performing prior art searches, identifying relevant art, and applying the art to the claims to meet or exceed examination goals.


Education & Professional Development


George Washington University


Juris Doctor (Honors Graduate)


State University of New York at Buffalo


Bachelor of Science in Chemical Engineering (Magna Cum Laude)


Registered to Practice U.S. Patent Trademark Office

Admitted to Practice In-House Counsel State of Xxxxxx

Admitted to Practice Virginia Minnesota District of Columbia


Professional Affiliations


Member Washington, D.C Bar Association

Member Xxxxxx Intellectual Property Association

Member American Intellectual Property Law Association


Community Service


Co-Organizer BlazeNYC


Excellent Professional References Provided Upon Request

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