RESUME
SUMMARY
Experienced patent attorney with strong prosecution background and portfolio analysis skills.
- Builds excellent collaborative relationships, becoming a valued partner
- Outstanding oral and written communication abilities; good listener
- Strong analytical skills, getting rapidly to the heart of issues
- Efficient ongoing learner of new technologies
- Scientific experience: classroom delivery and laboratory research/analysis
PROFESSIONAL ACCOMPLISHMENTS
Patent Prosecution:
- Prepared patent applications and prosecution documents on a wide variety of chemical technologies, regularly generating among the highest annual numbers of such documents in-house with very few extensions of time needed
- Supervised outside counsel drafting of chemical patent applications and prosecution documents, ensuring consistent high quality
- Drafted and prosecuted comprehensive patent portfolios to protect technologies such as polyarylene ethers and ink dyes
- Assembled cross-referenced database of company ink jet materials patent portfolio, enabling rapid analysis of portfolio from various aspects
- Planned worldwide foreign filing strategy for entire Xerox chemical patent portfolio
Client Counseling:
- Rapidly formed close working relationships with new inventors after Xerox takeover of another company
- Completed materials product reviews for patent infringement issues and drafted infringement and validity opinions to reduce possible litigation exposure
- Drafted and negotiated confidentiality, nonanalysis, and joint development agreements, including an in-house award-winning agreement between Xerox, a competitor, and a university to form a research center
- Conducted educational seminars on various aspects of patent law for clients, thereby enabling them to work with in-house and outside counsel more efficiently in patent preparation and prosecution and agreement negotiation
- Mentored new attorney to promote his rapid, competent assumption of independent prosecution responsibilities
Additional Experience:
- Drafted judicial opinions on broadly varied legal issues during judicial clerkship
- Taught undergraduate chemistry for two years, regularly receiving high ratings on student evaluation forms
- Conducted research in the area of phosphine chemistry
PAST PROFESSIONAL EXPERIENCE
OWNER, BYORICK LAW, Fairport, NY | 2009 - present |
XEROX CORPORATION, Rochester, NY Senior Patent Counsel (equivalent to law firm senior partner) |
1998 – 2009 |
XEROX CORPORATION, Rochester, NY Patent Counsel (equivalent to law firm junior partner) |
1992 – 1998 |
XEROX CORPORATION, Rochester, NY Patent Attorney (equivalent to law firm associate) |
1986 – 1992 |
CUMBERLAND COUNTY COURT OF COMMON PLEAS, Carlisle, PA Judicial Clerk, Hon. George E. Hoffer |
1984 – 1986 |
UNIVERSITY OF UTAH, Salt Lake City, UT Research Assistant, Chemistry |
1982 – 1983 |
UNIVERSITY OF UTAH, Salt Lake City, UT Teaching Assistant, Chemistry |
1981 – 1983 |
EDUCATION
Juris Doctor, cum laude, Dickinson School of Law of the Pennsylvania State University --Law Review, Woolsack Honor Society |
1986 |
Master of Science, Chemistry, University of Utah | 1983 |
Bachelor of Science, Chemistry, Lehigh University | 1981 |
LICENSING
New York Bar, June 2010; Member #4815312
Pennsylvania Bar, May 1987; Member #48693
District of Columbia Bar, May 1989; Member #418303 (currently on inactive status)
United States Patent and Trademark Office Bar, June 1987; Member #32,606
Admitted to practice before the Court of Appeals for the Federal Circuit, April 1990