I offer my expertise in the area of Intellectual Property Law, in particular patents (U.S. and Foreign, my patent registration number is 40,150), as well as trademarks and copyrights.
Experience in business dealings including licensing, various contracts, litigation support, business development and patent assessment. I have performed due diligence for Venture Capital firms, as well as providing invalidity and non-infringement opinions.
LEGAL EXPERIENCE
Daly, Crowley Mofford and Durkee, Of Counsel 2017 - Present
• Responsible for preparation, filing and prosecution of patent applications relating to a wide variety of electronic, electrical, software and mechanical arts for a wide variety of clients. Clients include Dell, EMC, Raytheon, and Sky1 Technology
• Responsible for preparation, filing and prosecution of trademark applications for a wide variety of clients.
Chapin Intellectual Property Law, Temporary Contract Attorney Feb. – April 2017
• Responsible for preparation, filing and prosecution of patent applications relating to a wide variety of electronic, electrical, software and mechanical arts for a wide variety of clients. Clients include Dell, EMC, UMass, and Sky1 Technology
• Responsible for preparation, filing and prosecution of trademark applications for a wide variety of clients.
Grossman Tucker Perrault & Pfleger, Temporary Contract Attorney 2016 – 2017
• Responsible for preparation, filing and prosecution of patent applications relating to a wide variety of electronic, electrical, software and mechanical arts for a wide variety of clients. Clients include Avaya, Osram-Sylvania, MIT, Zipcar and UMass
• Responsible for preparation, filing and prosecution of trademark applications for a wide variety of clients.
Partner/Owner – Anderson Gorecki & Rouille LLP 2012 - 2016
• Responsible for preparation, filing and prosecution of patent applications relating to a wide variety of electronic, electrical, software and mechanical arts for a wide variety of clients. Clients include a large network company where I managed a portfolio of over 400 cases relating to wireless networking and routing. Member of Patent Review committee, scheduled and managed patent mining sessions and provided training to in-house counsel relating to changes in IP law. Interfaced with foreign associates on a regular basis, including associates in Canada, United Kingdom, Germany, Ireland, France, Brazil, Korea, Japan, China, Hong Kong and India.
• Responsible for preparation, filing and prosecution of trademark applications for a wide variety of clients.
• Prepared infringement and validity studies for several Venture Capital firms.
• Drafted, negotiated and reviewed patent and trademark licenses.
• Provided litigation support to several litigation firms.
• Counseled corporate clients in a variety of Intellectual Property issues.
Partner - Chapin Intellectual Property Law LLC 2004 - 2012
• Responsible for preparation, filing and prosecution of patent applications relating to a wide variety of electronic, electrical, software, and mechanical arts for a wide variety of clients. Provided highest rate of issued patents for large fortune 100 company.
• Responsible for preparation, filing and prosecution of trademark applications for a wide variety of clients.
• Prepared infringement and validity studies for several Venture Capital firms.
• Drafted, negotiated and reviewed patent and trademark licenses.
• Provided litigation support to several litigation firms.
• Developed trademark and copyright practice and management responsibilities.
• Managed and trained associate attorneys ensuring high quality and client satisfaction.
• Counseled corporate clients in a variety of Intellectual Property issues.
Junior Partner – Daly, Crowley and Mofford LLC, 2001 - 2004
• Preparation, filing and prosecution of patent applications relating to a wide variety of electronic, electrical, software and mechanical arts for a wide variety of clients.
• Managed and trained associate attorneys ensuring high quality and client satisfaction.
Corporate Counsel - Empirix Inc. 2000-2001
• Oversaw and managed general and intellectual property legal work for Empirix Inc. which was spun off from Teradyne.
• Responsible for pre-litigation strategy development and litigation assistance. Resolved ongoing dispute prior to litigation.
• Managed outside counsel regarding establishment of Empirix Inc. as well as establishing foreign subsidiaries.
• Drafted, negotiated and reviewed contracts including master services agreements, subcontracts, licenses, distribution agreements and real property leases.
• Served as Director and Corporate Secretary for U.S. and foreign subsidiaries of Empirix Inc.
Division Patent Counsel – Teradyne 1999-2000
• Preparation, filing and prosecution of patent applications relating to test equipment and related software.
• Managed outside counsel regarding patent and trademark matters.
• Solicited invention disclosures from engineering groups
• Coordinated and oversaw patent review meetings with various engineering groups to determine patents to pursue.
Associate – Weingarten, Schurgin, Gagnebin and Hayes 1995-1999
• Preparation, filing and prosecution of patent applications relating to a wide variety of electronic, electrical, software and mechanical arts.
• Preparation, filing and prosecution of trademark applications.
• Provided assistance to Litigation group as needed.
