J. ROBERT MIRVILLE
*** ****** ***** ********, ** 19020
267-***-**** (h) 732-***-**** (c) ***********@*****.***
Admitted: NJ and PA Bars. USPTO (Reg. #46,407)
ATTORNEY/CORPORATE COUNSEL
IP-LAW SPECIALIST
Ten-year career providing transactional expertise and patent
preparation and prosecution services. Eight-year experience working in
systems engineering and three-year career in software engineering
LEGAL EXPERIENCE
* Document Review and Patent Search Analysis - Various Agencies
2007 to Present
Provided document review services to various agencies working
for an assortment of law firms in the DC and Philadelphia
metropolitan area. Performed patent search and prepared
patentability reports.
* Contract Drafting and Negotiation AT&T Corporate Law Group
1997-2002
Structured, prepared, reviewed and negotiated purchasing
contracts for all AT&T lines of business. As the Chief IP
attorney for the Supplier Management Law Group, drafted and
negotiated all IP-related agreements associated with company's
purchasing activities. Such agreements included software license
and software development agreements, hardware acquisition
agreements, service level agreements, consulting agreements and
non-disclosure agreements. Provided legal advice on day-to-day
company activities related to procurement contractual issues
* Patent Drafting and Prosecution AT&T Bell Labs - Law Division IP-
Law Group 1992-1997
Prepared and prosecuted patent applications for AT&T Bell Labs.
Managed the patent portfolio of the Business Communications
Services Group of AT&T. Oversaw and reviewed US and foreign
patent applications drafted by outside counsel. Developed
strategies for filing patent applications deemed particularly
valuable. Responsibilities also included preparation of
infringement, validity, and freedom-to-operate opinions.
Provided litigation support in the AT&T vs. MCI patent
infringement lawsuit. Developed seminars to educate engineers
and marketing people about patentability concepts and procedures
as well as the legal consequences of inappropriate disclosure of
AT&T proprietary information.
TECHNICAL EXPERIENCE
* Systems Engineering AT&T Information Systems 1984- 1987
As a Systems Engineer, my scope of duties included:
. Interfacing with marketing managers to assess the types of
new communications services features needed to fulfill
customer requirements and new marketing initiatives of AT&T
Business Communications Services
. Developing specifications for use by software developers to
write and test lines of code in order to meet such
requirements
. Insuring that the newly developed services features
integrate well with feature packages offered to customers
while assuring total system design integrity
* Technical Support Engineer AT&T Information Systems 1987-
1992
As a Tier III Technical Support Engineer, my responsibilities
included:
. Providing technical support and assistance to regional
technical support engineers and field support engineers for
major accounts for AT&T data (LAN/WAN) networking products
. Coordinating data networking product evaluations, including
new feature introduction, feature beta tests to ensure
optimum product quality. As part of such activities,
solicited customer's input at customer user group meetings.
. Supporting product marketing group and product development group
at industry trade shows and managing relationship between such
groups with respect to field support activities
* Software Engineering Mutual Benefit Life, Newark, NJ 1980-1984
. Designed, developed, documented and maintained software programs
in COBOL for use in Group Insurance systems. Interfaced with
business side clients to gather requirements and translate such
requirements into functional specifications;
. Other functions included writing test plans and test scripts to
functionally assess and evaluate developed software against system
requirements
TEACHING EXPERIENCE
* Corporate Training AT&T 1999-2002
. Developed Intellectual Property law training materials and
conducted training seminars for AT&T purchasing agents.
* University Teaching
2001-2002
. Developed and taught graduate level courses on Intellectual
Property Law and Telecommunications Regulation for Stevens
Institute of Technology
EDUCATION
. Spartan Health Sciences University, St Lucia, W.I.
Completed 3 years of medical school, 2007
. Seton Hall University School of Law, Newark NJ
Juris Doctorate, January 1993
. Rutgers University, New Brunswick, NJ
Masters of Science in Econometrics, 1979
. Universite du Quebec a Montreal
Bachelor of Science in Economics, 1976
Special Skills:
. Languages: Written and verbal proficiency in French and
Spanish
. Computer Skills: Experienced in use of Windows and all major
Microsoft Office packages, such as Word, Excel and PowerPoint
PROFESSIONAL AFFILIATIONS
. Member of New Jersey and Pennsylvania Bars
. USPTO Bar, Registration Number : 46,407
US PATENTS
. "On-demand communications services" US Patent No. 5,745,553
. "Method and system for transmitting activation codes to a
communication device" US Patent No. 6,396,914
. "Transaction authorization and alert system" US Patent No.
5,708,422
REFERENCES: Provided upon request