Engineer Mechanical

MARY KRISTIN NICHOLES, ESQ.

**B Forest Drive

Springfield, New Jersey 07081

H/C: 908-***-**** *********@*******.***

SUMMARY

Licensed Intellectual Property Attorney with extensive experience protecting intellectual property in alignment

with a corporate strategy. Able to effectively balance the requirements of inventors, managers, supporters, and a

full intellectual property docket. Excellent interpersonal and written communication skills. Expertise includes:

• Preparing and Prosecuting Patent and • Asset Purchase, Non-Disclosure, Licensing and

Trademark Applications Joint Development Agreements

• Due Diligence • Legal Opinions

• Prior Art Searches • Legal Research and Writing

LEGAL EXPERIENCE

Edwards Vacuum, Inc., Murray Hill, NJ

Intellectual Property Counsel 2008 – 2009

Patent Agent 2007 – 2008

Patent Engineer 2002 – 2007

• Prosecuted U.S. applications and assisted foreign agents and attorneys in prosecuting foreign applications

directed to mechanical, materials, and controls related inventions.

• Prepared U.S. applications directed to mechanical, materials and controls related inventions.

• Maintained the intellectual property portfolio including approximately 500 patent and 50 trademark matters.

• Co-chaired IP Steering Committee meetings at which filing, prosecution and other IP matters were reviewed and

decisions were rendered.

• Reviewed invention records and assisted inventors in fleshing out their inventions.

• Held training sessions on the patenting process from conception to maintenance. Separately met with scientists,

engineers, inventors, and local management and reviewed current development projects, identified intellectual

property and developed strategies for protecting the intellectual property.

• Managed several external law firms in the U.S., Europe, Asia, Israel and India.

• Oversaw recordation of title for numerous patents and trademarks globally.

• Performed due diligence for divestitures; reviewed, amended and negotiated the provisions of Asset Purchase

Agreements and other IP-related agreements; prepared Legal Opinions.

• Managed and trained docketing, foreign filing and USPTO paralegals.

SCIENCE AND ENGINEERING EXPERIENCE

The BOC Group, Inc. (BOC Edwards), Chanhassen, MN 1999 - 2002

Process Engineer

• Worked in the Chemical Management Division managing process engineering R&D projects. Assigned

priorities to other engineers, prepared proposals, obtained resources and managed customer relations.

• Gained knowledge of semiconductor acids, bases, solvents and slurries in the areas of blending, delivery,

metrology, compatibility with polymers and metals, filtration, particle measurement, and component reliability.

• Proposed and managed joint technical projects with Intel, Lucent Technologies and Applied Materials.

• Presented the results of R&D projects to customers at venues in the U.S., Europe and Israel.

• Assisted field service technicians by telephone and at customer sites to troubleshoot equipment issues.

• Provided training to customers, technicians and chemical, mechanical, electrical and software engineers.

RESEARCH

University of Washington Engineered Biomaterials (UWEB), Seattle, WA 1998

Undergraduate Research Assistant – Departments of Chemical Engineering and Organic Chemistry

• Investigated the surface chemistry and mechanisms of biomaterials; analyzed substrates with Nuclear Magnetic

Resonance Spectroscopy, Scanning Tunneling Microscopy and X-Ray Photoelectron Spectroscopy.

• Presented a technical poster at the 1998 UWEB Industrial Symposium and published a paper in a UWEB

Journal.

MARY KRISTIN NICHOLES, ESQ. PAGE TWO

EDUCATION

Seton Hall University School of Law, Newark, NJ

Juris Doctor, magna cum laude, January 2008

GPA: 3.407/4.333; Rank 4/44

GPA (Intellectual Property Concentration): 4.021/4.333

Honors: Recipient of the ABA/BNA Award for Excellence in the Study of Intellectual Property Law; Best Brief

Author – Appellate Advocacy; Invitee to the Moot Court Board; Nominee for the Advanced Legal Writing Award

Summer 2007: Studied Business Drafting at Hofstra University School of Law, Hempstead, NY

University of Washington, Seattle, WA

Bachelor of Science Chemical Engineering June 1999

GPA: 3.58/4.00

Honors: Specialty Area – Surface, Colloid, Polymer and Interfacial Science; Dean’s Honor List

Activities: American Institute of Chemical Engineers: Activities Chairperson – organized and managed a regional

research competition

PATENTS AND PATENT APPLICATIONS

Co-inventor of two U.S. Patents and one U.S. Patent Application:

1. U.S. 6,947,126 entitled “Dilution Apparatus and Method of Diluting a Liquid Sample”

2. U.S. 6,783,429 entitled “Apparatus and Method for Sampling a Chemical-Mechanical Polishing Slurry”

3. U.S. 2003/0063271 entitled “Sampling and Measurement System with Multiple Slurry Chemical Manifold”

BAR ADMISSION

Member of the U.S. Patent and Trademark Office Bar

Member of the New Jersey State Bar

Member of the New York State Bar

PUBLICATIONS

Co-author of several articles published in semiconductor-focused periodicals (more available upon request):

1. Nicholes et al., Measuring Particles in CMP Slurries, Semiconductor International, Vol. 24, No. 8, pp. 201-05

(July 2001).

2. Nicholes et al., Automatic Analysis and Control of Hydrogen Peroxide for Copper- and Tungsten-Polishing

CMP Slurry, European Semiconductor, pp. 51-54 (Apr. 2000).

3. Nicholes et al., Chemical Mechanical Polishing Slurry, The European J. of Contamination Control Cleanroom

Technology, pp. 13-16 (Mar./Apr. 2000).

ACTIVITIES

Seton Hall University School of Law, Newark, NJ 2008

Taught a copyright law lecture for Adjunct Professor Frank L. Politano, Esq.

Hon. John C. Lifland American Inn of Court, New Brunswick, NJ 2007 – 2008

Attended monthly meetings and presentations on IP given by federal court judges and experienced practitioners.

Participated in a mock argument against a motion for preliminary injunction at the U.S. District Court, Newark, NJ.

Contact this candidate