Chief IP Counsel / VP - IP / Exec. Dir. IP

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Position
Chief IP Counsel / VP - IP / Exec. Dir. IP
Location Confidential
No
Location
No preference
Willing to Relocate
Yes
Industry
Pharmaceuticals(Ethical)/Surgical/Medical-Equip.
Function
Legal-and/or-Regulatory Supervision
Compensation
$250,000 to $500,000

Resume Summary
Extensive IP experience as in-house counsel and in private practice. In-depth experience with strategies and tactics for IP protection on a global scale, partnering with clients to ensure that their innovation and IP assets are identified, protected and enforced.

Resume Body      CHIEF IP COUNSEL / VP - IP / EXEC. DIR. IP

CHIEF IP COUNSEL / VICE PRESIDENT IP / EXECUTIVE DIRECTOR IP

Versatile, innovative, and driven legal professional with ~20 years of intellectual property experience as in-house counsel and in private practice across a broad spectrum of technologies and geographies.

Proven ability to provide strategic legal and business guidance to senior management and cross-functional teams, and to lead and motivate high-performing internal and external teams of IP professionals to build valuable IP portfolios that support global business goals and objectives.

Comprehensive knowledge of a broad range of technologies developed over professional career as an IP attorney, and as an engineer and product manager at AT&T - Bell Labs.


CORE COMPETENCIES

* US / European Patent Law
* Intellectual Asset Management
* Global IP Strategy
* Risk Mitigation
* Trade Secrets
* IP Partnerships / Agreements
* High-Value Patent Creation
* Due Diligence
* Cross-Functional Leadership
* IP Litigation
* Competitive Intelligence / Analysis


LEGAL EXPERIENCE AND ACCOMPLISHMENTS

BECTON, DICKINSON AND COMPANY (BD) - Franklin Lakes, NJ 2002 - 2015
$8B Revenue, 26,000 Employees (FY 2015)

Senior Intellectual Property Counsel, BD Kiestra | 2014 - 2015
Senior Intellectual Property Counsel, BD Life Sciences - Preanalytical Systems (PAS) | 2010 - 2015
Senior Intellectual Property Counsel, BD Medical - Pharmaceutical Systems (Pharm Systems) | 2002 - 2010

Sole IP attorney responsible for developing and implementing global IP strategies, and providing strategic IP guidance and leadership for BD business units ($2.5B revenue, 5,000 employees) involved in the global research, development, manufacture, and sale of medical devices and technologies.

* Leadership & IP Portfolio Development- Led and managed a team of patent attorneys, agents and paralegals to identify and harvest, innovation, and to build and manage a global portfolio of patents, providing clients with a valuable competitive asset.

* Global IP Strategies & Client Relationships - Designed and implemented worldwide IP strategies for clients based on geographically-specific commercial operations, markets, products, and competitors, by building relationships with key business leaders to develop a deep understanding of clients' respective businesses.

* IP Due Diligence - Led IP due diligence activities as part of a team evaluating a $100M acquisition of patents and know-how, including structuring and managing internal "clean team" to receive and analyze target's confidential information.

* Agreements - Ensured protection of clients' interests and IP assets as lead IP counsel drafting and negotiating various commercial, development, collaboration, license, consulting and confidentiality agreements for cross-functional teams.

* Litigation - Asserted, defended and nullified patents in the US and Europe, including analysis of competitor IP and products; advising senior business and law group management of risks, costs and business implications; management of outside litigation counsel; and settlement in accordance with clients' objectives.

* Freedom to Operate - Identified and minimized the risk of launching new products throughout the world by performing freedom to operate analyses.

* Legal Spend Management - Managed outside counsel budget of $4.5M, controlled outside counsel spending through implementation of fixed-fee arrangements for patent prosecution, and achieved consistent annual savings in legal expenses through systematic evaluation of clients' patent portfolios.

* Policy Creation & Implementation - Created and implemented the BD Trade Secret Policy, thereby creating a corporate-wide culture emphasizing the importance of trade secrets and their impact on long-term business growth and competitiveness.


PRIOR LEGAL EXPERIENCE AND ACCOMPLISHMENTS

STROOCK & STROOCK & LAVAN - New York, NY
Associate (1998  2002)

RIKER, DANZIG, SCHERER, HYLAND & PERRETTI - Morristown, NJ
Associate (1997  1998)

COHEN, PONTANI, LIEBERMAN & PAVANE - New York, NY
Associate (1995  1997)

* Assisted clients' new product launches by conducting freedom to operate analyses to assess and mitigate the risk of patent infringement.

* Prepared and prosecuted patent applications in the electrical, software and mechanical arts.

* Assisted with establishing a new patent group in a large general practice law firm.

* Worked closely with corporate attorneys to conduct IP due diligence for potential acquisitions.

* Provided trademark, copyright and general intellectual property counseling to corporate clients.

* Supported patent litigation including the preparation of briefs and motions, document production, depositions, research, and preparation of appeals to the Court of Appeals for the Federal Circuit.


ENGINEERING & BUSINESS EXPERIENCE

AT&T - BELL LABORATORIES, Warren, NJ 1986 - 1995

Product Manager | 1991 - 1995

Managed the design, manufacturing and commercial launch milestones for 2 data networking, ensuring their successful commercial launch.


Member of Technical Staff | 1986 - 1991

Designed 3 new data networking switch products capable of 16, 64 and 540 simultaneous users.


EDUCATION

Juris Doctor (J.D.)
Seton Hall University School of Law - Newark, NJ

Bachelor of Science (B.S.) Electrical Engineering Technology, magna cum laude
New Jersey Institute of Technology - Newark, NJ


BAR ADMISSIONS

New York
New Jersey (In-House Counsel License)
US Patent and Trademark Office


COURT ADMISSIONS

Court of Appeals for the Federal Circuit
U.S. District Court -- Eastern District of New York
U.S. District Court -- Southern District of New York

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