DEREK RICHMOND

**** ***** **** **.

McLean, VA **101

703-***-****

ac5qtb@r.postjobfree.com

EXPERIENCE

Harness, Dickey & Pierce, PLC, Reston, VA

Counsel, 2015 – Present

Counsel clients regarding development and exploitation of intellectual property portfolios, including securing patents, trademarks and trade secrets; managing litigations and licensing efforts.

Perform all functions related to international patent procurement including patent application drafting, filing, prosecution and appeal.

Organize and host marketing activities including various intellectual property workshops conducted in coordination with American Intellectual Property Law Association and U.S. PTO. Introduce Firm to new and underserved markets via lecturing, writing and commenting in journals on legal developments.

RatnerPrestia, Washington, DC,

Counsel, 2011 – 2015

Opened new satellite office in Washington, DC; managed local firm community outreach to establish firm’s reputation in business community; hired new satellite office employees.

Counsel clients regarding development and exploitation of intellectual property portfolios, including securing patents, trademarks and trade secrets.

Perform all functions related to domestic and international patent procurement including patent application drafting, filing, prosecution and appeal.

Nath & Associates, Alexandria, VA,

Partner, 2003 – 2011

Managed Intellectual Property Portfolios

Advise clients on entering markets within the United States using intellectual property to meet business objectives. Advise clients regarding enhancing intellectual property to attract investors. Maintain a network of business advisors to assist clients with, among other things, mergers & acquisitions, business development, and commercialization of intellectual property.

Foreign Patent Prosecution in Asia, Europe and Africa – Work with associates within foreign jurisdictions to establish and maintain intellectual property portfolios for U.S. clients within each jurisdiction.

Managed Continuing Legal Education Program

Prepare on-line continuing legal education program to be shared between home office and satellite office.

Managed mechanical/electrical group associate dockets.

Oblon, Spivak, McClelland, Maier & Neustadt, Litigator, Arlington, VA

Litigation:

-Multi-Tech v. Net2Phone – Second Chair (Technology: internet telephony)

Synopsis: Multi-Tech alleged patent infringement by client Net2Phone.

District Court Outcome: Decision in Favor of Client Net2Phone (Upheld by Federal Circuit, 357 F.3d 1340 (Fed. Cir 2004)

-Engate v. Esquire (Technology: Computer Aided Transcription Devices)

Synopsis: Engate alleged patent infringement by client Esquire

District Court Outcome: Parties settled

Interferences – Worked with Charles Gholz on (pre-America Invents Act) Interferences including interviewing witnesses, preparing witness affidavits/declarations, arguing before the (former) BPAI

EDUCATION

George Washington University, Washington, DC

Juris Doctor

Lawrence Technological University, Southfield, Michigan

Bachelor of Science in Mechanical Engineering

Concentration in Thermal Fluid Systems Design

PUBLICATIONS, LECTURES AND SERVICE

Global Intellectual Property Convention - Speaker Bangalore, India January 2018

Prosecution Trends in U.S. PTO Art Units 3600/3700 – International Intellectual Property Law Association Conference, Brussels, Belgium, June 22, 2017

U.S. PTO Technology Centers 3600/3700 Customer Partnership Meeting Panel Moderator, June 1, 2017

“IPRs at Fed. Circ.: When Fixed Is Not 'Fixed' But Indefinite,” Law 360, July 1, 2016

Wii Patent Case: Recalibration of Means-Plus-Function Scale,” Law 360, July 8, 2014

International Ibormeith v. Mercedes-Benz: A Driver Assist Patent that Lost its Way, December 31, 2013

How Fed. Circ. May View Post-AIA Invention Sales Offers, Law 360, August 20, 2013

Promoting Automotive Repair, Trade, and Sales Act of 2013 (“PARTS ACT”) – How this Bill Differs from its Earlier Versions in the 111th and 112th Congresses, June 2013

Entrepreneurship and Digital Media Technologies Panelist, Babson College Black Affinity Conference April 2011

National Collegiate Inventors and Innovators Alliance: Engaging Entrepreneurial Alumni, The Challenge and the Opportunity, Panelist: –Lawrence Technological University, March 2011

CommNexus: Design Patent Procurement and Enforcement – Round Table Panelist: San Diego April 2010

Lecturer American Association for the Advancement of Science Conference – “Current Patent Claim Drafting Techniques,” San Diego February 2010

Invention-to-Venture Entrepreneurial Conference – Round Table Panelist: Business Considerations for the Entrepreneur – February 2009

INTERESTS

Public Speaking, Teaching, Basketball, Poetry, Old Movies, Golf, Learning to Fly.

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