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Design Engineer Electrical

Location:
Plano, Texas, 75023, United States
Posted:
May 30, 2010

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Annette M. Thompson

EDUCATION & TRAINING

UNIVERSITY OF MIAMI SCHOOL OF LAW, Coral Gables, Florida

Juris Doctor, May 1998

STANFORD UNIVERSITY, Stanford, California

Bachelor of Science, Electrical Engineering - Computer Science Emphasis,

August 1984

CAREER DEVELOPMENT

Patent Associate 4/2008 to Present

Boutique law firm, Dallas, Texas

Duties

Domestic and foreign patent preparation and prosecution. Patent

preparation and prosecution activities include interfacing with inventors,

in-house counsel, and foreign associates.

Accomplishments

Recruit, manage, and work on domestic and international portfolio of

telecommunications and networking client. Established firm practices and

procedures for foreign prosecution for client purposes.

Patent Associate 6/2007 to 2/2008

Boutique law firms, Dallas, Texas

Duties

Patent prosecution, trademark responses, and IP litigation activities

involving invalidity contentions. Patent preparation activities included

interfacing with inventors and preparation of semiconductor integrated

circuit architecture, image analysis and electronic design automation

applications.

Accomplishments

Recruited and commenced work on the IP portfolios of two high

technology corporate clients.

Registered Patent Agent 9/2006 to 5/2007

Conley Rose P.C., Plano, Texas

Duties

Primary focus on patent preparation of telecommunication applications

and prosecution of patents in the design telecommunication, and chemical

arts.

Accomplishments

Advised firm members on office action prosecution strategy.

Primary Patent Examiner 1999 to 2006

United States Patent and Trademark Office, Alexandria, Virginia

Duties

Under the applicable patent statutes and rules, adjudge the

patentability of each intellectual property application classified in the

Semiconductor Technology Center 2800, and specifically the circuit design

art unit, and based on that adjudication, as a primary examiner, either

grant or deny the issuance of a patent.

Accomplishments

> As a primary patent examiner, train and advise junior and other

examiners, particularly in the circuit design art unit. Review and

sign the office actions of junior patent examiners in the circuit

design art unit. Serve as a resource to patent examiners in other art

units.

> Review incoming, unassigned patent applications and determine their

classification and sub-classification for the circuit design art unit.

Based on that review, either transfer the application to another art

unit or assign it to an examiner within the art unit for prosecution.

> On behalf of Technology Center 2800, provide Patent Academy approved

Patent and Procedure lectures to newly hired patent examiners on the

35 USC 103 statute, and other selected laws and Rules.

Law Clerk 1996 to 1998

Law Offices of Charles Groves, North Miami, Florida

Duties

Worked independently on legal projects for general practice law firm.

Accomplishments

> Performed legal research, prepared summary judgment motions and

replies, drafted memoranda of law.

Law Offices of Douglas Stratton, Miami Beach, Florida

Duties

Performed legal research in the areas of family, corporate, and tort

law.

Accomplishments

> Drafted memoranda of law, motions, replies, and interrogatories.

Prepared for a participated in divorce trial.

Malin, Haley, Dimaggio & Crosby, P.A. Ft. Lauderdale, Florida

Duties

Drafted utility patents for Intellectual Property Law firm.

Investigated, analyzed, and prepared prior art summaries. Briefed patent

infringement cases. Researched and drafted memoranda on the Little FTC

Act, dilution, unfair competition, attorney's fees, palming off, trade

dress infringements, false patent marking.

Accomplishments

> Prepared successful motion, memorandum of law, and replies for award

of attorney's fees. Reviewed and revised the firm's Florida entry in

the Publication State Trademark and Unfair Competition Law. Conducted

discovery for infringement litigation.

Digital Design Engineer 1984 to 1995

Xerox Corporation, El Segundo, California

Duties

Designed Application Specific Integrated Circuits (ASICs) for use in

Xerox products.

Accomplishments

> Worked effectively as a project team leader and team player to meet

project schedules. Wrote and edited major section of technical

specifications for designs. Conducted technical presentations and

reviews for senior management on completed designs and designs in

progress.

SHORT SUMMARY OF OTHER QUALIFICATIONS

1. National Merit Scholar

2. Vice-President, University of Miami School of Law Intellectual

Property Law Society

3. Life Member - Stanford Alumni Association

4. Member, American Intellectual Property Law Association

5. Member, Phi Delta Phi, International Legal Fraternity, 1997-Present

6. Member, Institute of Electrical and Electronic Engineers (IEEE-USA)

7. Member, National Speaker's Association

8. Patent Examiner Master's Level Certification, July 2003

9. USPTO Outstanding Performance, Productivity Gainsharing, and

Special Achievement Award, 2001

10. Recognition for submission of Invention Proposal, 1994

11. Xerox Women's Leadership Development Program, 1985

12. Dale Carnegie Course Book Award, 1993; Dale Carnegie Course Graduate

Assistant, 1994



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