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