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<pre>Array ( [var] => cut_url ) </pre> Resume for John B. for Attorney / Paralegal / Legal Services in Ridgefield, Connecticut. Search More Resumes for Attorney / Paralegal on Resumark.com #Z2XRN6IXF
 

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Resume for John B. for Attorney / Paralegal / Legal Services in Ridgefield, Connecticut




Occupation: Attorney / Paralegal Industry: Legal Services
Country: United States City: Ridgefield
State: Connecticut ZIP: 06877



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JOHN E. B.

Beechwood Lane

Ridgefield, CT 

Email:

CORPORATE EXPERIENCE

TTB Technologies, LLC, Ridgefield, CT       June March.

CEO and Founder

• Directed and managed the development, launch and commercialization of business networking site.

• Managed legal issues relating to the company including, establishing corporate structure, negotiating and drafting commercial contracts, and procuring patent and trademark protection for company intellectual property.

• Successfully transferred business to new management and new corporate entity.

Advanced Technology Materials, Inc., Danbury, CT           Jan. June

Chief Intellectual Property Counsel:

• Developed, implemented and improved strategies for company executives, general counsel, and senior sales and R&D management teams regarding intellectual property matters, including patent, trademark, trade secret, copyright and antitrust issues in corporate/commercial transactions and litigations.

•     Negotiated and drafted confidentiality agreements, license agreements, joint development agreements, manufacturing agreements and global purchasing agreements.

• Developed and implemented improved form confidentiality agreements, joint development agreements and policies for conducting business under such agreements. 

• Managed U.S. and foreign intellectual property litigations.

• Conducted due diligence evaluations of third party IP portfolios and managed and supervised the drafting of patent opinions by outside counsel.

• Implemented and improved company policies regarding intellectual property and other legal matters.

•     Supervised the maintenance of company’s intellectual property portfolio.

• Established improved invention disclosure procedures, patent application drafting and filing processes and patent prosecution strategies. 

Meso Scale Diagnostics, LLC., Gaithersburg, MD Former joint venture of IGEN International, Inc. and 

IGEN International, Inc., Gaithersburg, MD         Jan. Jan. 

Chief Intellectual Property Counsel:

• Negotiated and drafted corporate and commercial agreements culminating in the acquisition of IGEN by Roche Holding Ltd. and spinoff of BioVeris Corporation; developed strategy and prepared initiation of simultaneous patent litigations in United States and Europe.

• Developed strategy for company executives, general counsel, senior management, sales management, and inventors regarding intellectual property matters, including patent, trademark, trade secret, copyright and antitrust issues in corporate/commercial transactions and litigations.

• Counseled and supported business development and technology groups; drafted, reviewed and negotiated license, material transfer, supply and nondisclosure agreements; reviewed sales & marketing materials.

• Performed due diligence evaluations of intellectual property and prepared patent opinions.

• Developed and maintained company’s patent, trademark and copyright portfolio.

• Established New York office and managed integration of additional personnel including second patent attorney and Ph.D. patent agent. 

LAW FIRM EXPERIENCE

Winston & Strawn, New York, NY       Sept. to Dec.

Whitman Breed Abbott & Morgan LLP, New York, NY    Nov. to Sept.

      Firm merged with Winston & Strawn in Sept. .

Curtis, Morris & Safford, P.C., New York, NY      Apr. to Nov.   Firm dissolved in Nov. ; joined several former Curtis, Morris & Safford attorneys in forming Intellectual Property Department at Whitman Breed Abbott & Morgan.

Associate:

Transactions:

• Negotiated, evaluated, and prepared nondisclosure agreements and intellectual property aspects of asset purchase agreements, stock purchase agreements, intellectual property assignments and licenses, teaming agreements, and technology development agreements including beta licenses and software development contracts.

• Prepared and evaluated descriptions of intellectual property assets for private placement disclosures.

•    Performed due diligence evaluations of intellectual property.

•    Counseled and advised clients in negotiations for resolving ownership, right to use and license disputes.

Litigation:

• Prepared patent opinions relating to infringement, validity and enforceability issues.

• Prepared experts for deposition and drafted summary judgment motions, discovery requests and responses, complaints, answers, and proposed jury instructions.

•    Conducted depositions and prepared experts and witnesses for trial in patent litigations, including pharmaceutical litigations.

•    Managed discovery in patent litigations.

Prosecution:

•     Advised and assisted in the formation of a fullservice intellectual property department within general practice firm.

•  Managed and supervised patent prosecution docket for Fortune company.

•   Served as lead associate and primary contact for several firm clients, including large privately held multinational company and webbased businesses.

•  Advised on and devised strategy for company executives, inhouse counsel, management, and inventors regarding intellectual property matters, including patent, trademark, trade secret, copyright and antitrust issues. 

•    Prepared patentability, infringement and validity opinions.

• Prepared and prosecuted U.S. and foreign patent applications for Internetbased services and products, “business methods” and in chemical, biotechnical and mechanical arts including preparation of  responses to office actions and conducting examiner interviews; prepared and prosecuted trademark applications.

•     Drafted legal memoranda and researched and analyzed legal issues relating to patent, trademark, trade secret, copyright and antitrust issues. 

GOVERNMENT EXPERIENCE  

United States Patent and Trademark Office, Washington, D.C.  Jan. to Mar.  

Patent Examiner: 

Examined patent applications for inventions relating to high temperature oxide superconductors, coatings, ceramics, pigments, piezoelectric materials and dental compositions. 

EDUCATION

•    George Mason University School of Law, Arlington, VA

Juris Doctor, December . 

•    Columbia University, School of Engineering and Applied Science, Henry Krumb School of Mines,

   New York, NY 

      Bachelor of Science, May ; Major: Metallurgy & Materials Science. 

OTHER

• Conference Chair:  Chaired session entitled “Concept to Product: Intellectual Property & Business Development” at The Society for Biological Screening, th Annual Conference & Exhibition, September , Orlando, Florida.

• Speaker:  Presentation entitled “A Comparison of Patents, Trademarks, Copyrights, and Trade Secrets”, The Society for Biological Screening, th Annual Conference & Exhibition, September , , The Hague, Netherlands.

• Sole Inventor:  U.S. Patent No. ,, “Electronic Advertising Device and Method of Using the Same“; U.S. Patent Nos. ,, and ,, “Computerbased Networking Method and System for Performing the Same“.

• Memberships/Associations:  Member of New York Bar; Registered to practice before the United States Patent and Trademark Office Reg. ,; Member of American Intellectual Property Law Association.


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