Mastermind IP Law P.C
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Registration No. 36,518

PROFESSIONAL SUMMARY

Twenty-six years of scientific and legal experience including in-house, outside and government positions. Scientific positions include various bench chemistry roles in pharmaceutical and biotech labs ranging in size from extreme start-up to big pharma, with products including antihypertensives, ophthalmics, bronchodilators, antibiotics, anxiolytics, antianginals, and anti-inflammatory agents. Legal experience encompasses divergent settings and duties that complement one another across the interfaces of science and technology law. Practice includes patent, trademark and regulatory law in the areas of drug delivery (liposomes, microspheres and magnetic particles), diagnostic imaging agents, diagnostic and therapeutic chemical compounds, medical devices, nanoparticles and other technologies. Experience includes a wide variety of transactional matters and supporting matters of dispute.

 

EXPERIENCE

Mastermind IP Law P.C., 421 Santa Marina Court, Escondido, CA 92029

President & C.E.O.. Duties include a wide variety of contract intellectual property legal services for clients in a wide variety of fields including pharmaceuticals, inorganic chemistry, toys, online game development, virtual and augmented reality products, sportswear, automotive components, green technology, horse tracks, pari-mutuel wagering, restaurant services, business services, education, marketing, apparel, stationery, novelty items, house wares, sporting goods, health & beauty supplies, professional sports, manufacturing, nuclear safety, retail, consumer electronics, multimedia entertainment, animation, books, software development, sporting equipment, jewelry, and motion picture film development. Legal areas include patent, design, trade secret, trademark and copyright law, as well as regulatory and contract law, including strategic planning, clearance, prosecution, maintenance, opinion work, and enforcement. Management of foreign and domestic intellectual property portfolios and docketing. Oversight of foreign associates. Interaction with client management and client external counsel. Preparation of legal opinions and reports for client management, as well as intellectual property awareness presentations for client employees. Participation in client business and marketing planning. Organization of due diligence proceedings and treatment of intellectual property during mergers, acquisitions and divestitures. Litigation support. Licensing. Delivery of general intellectual property advice to client business units. (2004-present)


 

National Association of Patent Practitioners (NAPP), 1629 K Street NW, Suite 300, Washington, DC 20006

Vice President & Director (2014-2016, Chair-Member Benefits Committee (2014-2015), Acting Treasurer (2013-2014). Officer & Director duties include assisting the president in setting the agendas and conducting business and strategy meetings, and serving on ad hoc task forces in the areas of corporate governance, legal affairs, practice systems, budgeting, and financial controls. Collaboration on Articles and Bylaws revisions. Policy drafting. Liaison to Committee Chairs and Executive Director. Performance of typical duties consistent with Boards of Directors. Chair duties included development and implementation of new member benefits, interaction with third party providers, recruitment of committee members and ad hoc volunteers, and direct interaction with individual members. Mentoring of junior members in the area of patent practice. Delivery of CLE presentations at the annual meeting in the areas of liability risk reduction and professional responsibility. Treasurer duties included budgeting and financial reporting, coordination of an independent audit, and implementation of auditor recommendations for improved procedures. Trademark counsel to the organization. The NAPP is a non-profit organization and these positions are unpaid, volunteer efforts.


 

Paul, Hastings, Janofsky & Walker LLC, 3579 Valley Centre Drive, San Diego, CA 92130

Intellectual Property Attorney. Duties included client counseling, patent and trademark application drafting and prosecution, advising on regulatory issues and participating in opposition and interference proceedings. Handling of large dockets of foreign patent and trademark matters. Patent, trademark, and domain name portfolio development and management. Strategic planning and competitor analysis. Preparation of legal opinions including freedom, invalidity and non-infringement. Contract drafting, including confidentiality, material transfer and licensing. Due diligence for patent and trademark portfolios, prosecution histories, and chains of title. Negotiation of domain name transfers. (2003-2004)


 

Fish & Richardson P.C., 4350 La Jolla Village Dr., Ste 500, San Diego, CA 92122

Intellectual Property Attorney.  Duties included client counseling, patent and trademark application drafting and prosecution, and advising on regulatory issues. Handling of large dockets of foreign patent and trademark prosecution. Patent, trademark, and domain name portfolio development and management, strategic planning and competitor analysis. Preparation of trademark clearance reports. Preparation of legal opinions including freedom, invalidity and non-infringement, as well as contracts including confidentiality, material transfer and licensing. Advisement on patent expirations, term extensions, reexaminations, reissues, FDA Orange Book listings, ANDA filings, and Paragraph IV certifications. Liaison to San Diego Science Alliance. Preparation of client newsletters. Head of pro bono K-12 science awards program. (1998-2003)

 

California Western School of Law, 225 Cedar Street, San Diego, CA 92101

Adjunct Professor.  Duties included teamwork with other adjunct professors to develop and implement a “Patent Practicum” course in advanced patent law. The course was designed around a fictitious corporation, inventors, inventions and hypothetical fact patterns intended to mirror realistic scenarios arising in the course of representation. Students were challenged with practical application of theoretical patent law to genuine situations commonly faced by patent practitioners. (1998-1999)

 

Molecular Biosystems, Inc., 10030 Barnes Canyon Rd., San Diego, CA 92121.

Patent Agent and Manager of Intellectual Property. Duties included management of the intellectual property department consisting of patent practitioners, paralegals and legal secretaries. Preparation of the IP department budget. Oversight of the foreign and domestic intellectual property portfolio, including patents, trademarks, in- and out-licensed technologies and trade secrets relating to diagnostic imaging agents (ultrasound, MRI and CT), antisense compounds and molecular probes. Performed patent application drafting and prosecution, as well as strategic planning and competitor watch/analysis. Management of outside counsel in areas related to negotiation, appeal, interference, reexam, reissue, opposition, term extension, infringement and litigation (patent and FDA). Cooperation with licensees, licensors and other legal representatives on strategic teams and collaborative research and agreement review and re-negotiation. Liaison to research staff in the areas of proper invention disclosure practice, laboratory notebook record-keeping and other legal/scientific subjects. Presentation of IP workshops for management and research staff. Development of IP-related policies including those for trade secrets, document retention and scientific publication. Coordination of interdepartmental IP efforts between R&D, Clinical, Regulatory, Marketing, Production, Human Resources and Finance. Collaboration with third-party counsel relating to merger proposal. Representation of management at Congressional hearings on proposed changes to intellectual property laws. (1993-1998)

 

U.S. Patent & Trademark Office, Crystal Mall One, Arlington VA 22202. 

Patent Examiner in Art Unit 1205 (Organic Chemistry).  Duties included management of an art-specific docket of patent applications primarily relating to pharmaceuticals, including remedies for drug and alcohol dependency, hair growth progression and regression, and lipid metabolism. Patent examination, including physical and database searching for relevant subject matter and preparation of Office Actions. Participation in interviews with patent attorneys, agents and inventors. Generation of formal correspondence pertaining to the legal and technical validity of applications within the limited statutory time periods. (1990-1992)

 

Biotrax, Inc., 5202 Westland Blvd., Baltimore, MD 21227.

Research Assistant. Duties included growth and recovery of cell cultures, hybridization of DNA, slide prep, microscopy, and generation of written protocols in a start-up laboratory setting. Research related to fish growth hormone. (1990)

 

Bausch & Lomb Pharmaceuticals, 110 Kennedy Dr., Hauppauge, NY 11788. 

Chemist - Quality Control. Duties included all aspects of laboratory procedures as well as generation of written methodologies for pharmaceutical chemistry. Products included a wide variety of ophthalmic pharmaceuticals and OTC preparations. (1989)

 

Vitarine Pharmaceuticals, 227-15 N. Conduit Ave., Springfield Gardens, NY 11413.

Associate Chemist - Analytical Research. Duties included performing various experiments to establish generic bioequivalency data using laboratory apparatus including UV, HPLC, etc. Products included a wide variety of orally administered pharmaceuticals. Familiar with methods outlined in the USP. (1989)

 

EDUCATION

SUNY at Stony Brook        
Stony Brook, NY 11794      
B.S. Biological Sciences
August 1989

Thomas Jefferson School of Law
San Diego, CA 92110
Juris Doctor
December 1996

University of California San Diego
La Jolla, CA 92093
Certif. Regulatory Affairs
March 2001

 

ADMITTANCE

  • Registered to practice before the U.S. Patent & Trademark Office (1993; #36,518)
  • Admitted to the bar in California (1998; #1962410)
  • Admitted to the bar in the District of Columbia (2001; #470855)

 

OTHER

  • American Jurisprudence Awards - Professional Responsibility and Intellectual Property
  • CALI Award - Sports Law
  • Member - American Intellectual Property Law Association, National Association of Patent Practitioners, Intellectual Property Section of the California Bar, San Diego Intellectual Property Law Association, International Trademark Association, Regulatory Affairs Professionals Society, San Diego Regulatory Affairs Network and American Chemical Society
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