Description
Dynamic Senior Counsel with more than 20 years of Intellectual Property experience in the chemical industry in corporate and private practice. Proven major chemical industry expertise developing Intellectual Property strategies for multiple business units, managing patent filing and maintenance cost, and identifying potential patent challenges and risk. Skilled at assessing product patentability, filing patent applications, and prosecuting domestic and foreign applications. Proficient at managing outside counsel for patent preparation, prosecution, mergers and acquisitions. Extensive experience in licensing, and IP related commercial contracts. Solid transactional and due diligence support for mergers, acquisitions and divestitures. Strong professional experience rendering patentability and Freedom to Operate opinions, and providing IP litigation support.
Work Experience
COMPANY | POSITION HELD | DATES WORKED |
---|---|---|
(Confidential) | Principal | 6/2012 - Present |
Engelhard/BASF | Senior Counsel | 2/1991 - 5/2012 |
Education
SCHOOL | MAJOR | YEAR | DEGREE |
---|---|---|---|
Cleveland Marshall College of Law | Law | Law Degree | |
Cleveland State University | Chemistry | Bachelor Degree |
Accomplishments
Highlights:
• Performed Freedom to Operate study for a potential commercial product. Researched pertinent patents and provided detailed opinions clearing the product for commercialization. • Provided patentability opinions on invention disclosures and filed more than 20 US patent applications with over 10 US applications issued. • Prosecuted 100+ US and foreign cases which included 500+ US responses / foreign instructions. • Addressed potential litigation alleging patent infringement of a third party patent by a catalyst business acquired through acquisition. Evaluated potential exposure and negotiated favorable settlement of potential lawsuit allowing company to continue operations without interruption. • Prepared licensing agreement for proprietary catalyst performing market research to determine price. Licensed catalyst production for millions of dollars over original offer for mutually profitable agreement. • Covered new catalyst development with patent strategy to protect the catalyst technology from third party’s designing around the core invention. The strategy successfully protected a commercial catalyst earning premium prices in the commodity market. • Negotiated a joint development and marketing agreement with an engineering company to improve a catalyst used in a process licensed by the engineering company. Company earned millions of dollars selling the resulting catalyst for use in the licensed process. • Performed negotiations and due diligence for business acquisitions.Companies I like:
3M, Honeywell, Dow, L'Oreal, Bristol Myers Squibb, Pfizer, AstraZeneca, ChemQuest chemicals, Hercules Chemical, Celanese Corp, Troy Chemical Corporation Inc, Ashland Specialty, Criterion Chemical LLC, Lonza Inc, Cytec Industries Inc, shell, ashland, ExxonMobil, bp, Amoco, Eastman, Monsanto, quantum, Equistar Chemicals, Lyondellbasell, Bayer
Job Skills
Keywords
- Patent Attorney
- IP Attorney
- Intelectual property Attorney
- Attorney IP
- Patent Lawyer
- IP lawyer
- Intellectual Property Lawyer
- Patent Lawyer chemistry
- patent attorney chemistry
- Intellectual Property Attorney
- IP Attorney chemistry
- attorney intellectual property
- attorney intellectual property chemistry
- patent counsel
- IP counsel
- intellectual property counsel
- patent counsel Chemistry
- IP counsel chemistry
- intellectual counsel chemistry
- patent lawyer chemical
- patent attorney chemical
- intellectual property attorney chemical
- patent counsel chemical
- intellectual property counsel chemical