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