
Intellectual Property Lawyer
Rochester, New York Area

Intellectual Property Lawyer
Rochester, New York Area
Educated as an aerospace engineer and a lawyer, working as a patent attorney.
After receiving my undergrad in Aerospace Engineering (1990), I worked for the Patent Office for three years. During my time at the Office, I took the Patent Bar (1992), and after I left the Office for law school (1993), I became a Patent Agent (1994). While in law school, I worked for the SUNY Research Foundation and a Rochester law firm, Eugene Stephens & Associates (now part of Brown & Michaels), which I later joined full time (1996). In 2000, I shifted to in-house practice at Xerox, then, following economic hard times for Xerox in 2003, became an independent contracting patent lawyer until the start of my position at Cantor Colburn LLP (2008).
Representative technologies: power handling equipment/software, gas turbines, electrophotography, MEMS/semiconductor technology and packaging, internet applications, other computer software, optical metrology, electrohydraulic automatic transmission control systems, photolithography, chemical vapor deposition, space vehicle fuel control valves, water purifiers, fire resistant safes, bottling, window/furniture hardware, solgel curing apparatus, laser gun sights, and laser pulse weapons.
(Partnership; Law Practice industry)
July 2008 — April 2009 (10 months)
Private practice working with multinational and domestic corporate clients, interacting with in-house counsel and inventors
Prepare, 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
(Law Practice industry)
July 2004 — July 2008 (4 years 1 month)
Private practice working w/domestic, European, Japanese clients
Prepared, 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, flooring
Worked w/firms in India, Brazil, China, Europe
Installed, managed, troubleshot, maintained, repaired LAN, personal computers, related accessories & equipment, websites
(Public Company; XRX; Information Technology and Services industry)
2000 — 2003 (3 years )
Counseled research groups, prep/pros, right to use/non-infringement studies in photoreceptor belt, digital imaging, color science, mechanical systems, internet, and computer software technologies
Assisted with/advocated for nascent research program that became $25M product program
Secured coverage for tech now in most Xerox machines
Co-chaired Outside Counsel Team, selection of OC, streamlined OC interaction, liaison to largest OC firm Xerox employed, assigned cases to OC
Created/maintained Best Practices web site/start page for IP Dept
WinNT/Mac/virtual NT workstation customization for use on NT network
(Law Practice industry)
1994 — October 2000 (6 years )
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 more
Evaluated 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 others
Evaluated marks for registrability, including initial consultations, ordering/performing searches of registers, analyzing search results, and preparing opinions; prepared/prosecuted applications
While 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 crashes
Researched, recommended, ordered, and installed equipment as necessary
(Educational Institution; Higher Education industry)
1994 — 1996 (2 years )
Performed searches for inventions submitted by faculty of SUNY at Buffalo
Evaluated results of searches to form and write patentability opinions
Contacted companies to license inventions; Acted as liaison with patent counsel
Maintained Windows 3.11 installs
(Government Agency; Government Administration industry)
August 1990 — August 1993 (3 years 1 month)
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.
JD , Law , 1993 — 1996
1985 — 1990