Sales Supply Chain
Resume:
Benjamin Carlsen, JD
**** **** ****** ******, *******, IL 60645
(773) 576 – 9328 ac5k4h@r.postjobfree.com
LinkedIn Bio: http://www.linkedin.com/in/benjamincarlsen
OBJECTIVE
To obtain your attorney position where I can apply my extensive expertise as an in-house attorney for a large Fortune 500 company, and my experience with business, technology, manufacturing, finance, procurement, and supply chain, to provide timely, effective, and high quality legal support for your activities.
BAR ADMISSIONS
Federal Bars
United States Patent Office, Patent Bar (Registration# 52,697), 2000
United States Federal Court, Northern District of Illinois, 2005
United States Federal Court, District of Minnesota, 2005
State Bars
Illinois Supreme Court (by Bar Exam), (Registration# 6282624), 2004
Minnesota Supreme Court (by Bar Exam), (Registration# 035014X), 2005
International Bars
Canadian Intellectual Property Office, 2006
EDUCATION
Juris Doctor - including Intellectual Property Law Certificate Program – May, 2004
Chicago-Kent College of Law – Illinois Institute of Technology, Chicago, IL
CALI Award for highest class grade in International Law
Chicago-Kent Honorary Merit Scholarship, Recipient
Chicago Intellectual Property Colloquia, Fellow and Founding Member
Counseled clients in school’s legal clinic
Bachelor of Science in Chemistry major, and Computer Science minor- June, 1997
College of Staten Island – City University of New York, Staten Island, NY
Spanish study abroad program at Universidad Laica Vicente Rocafuerte de Guayaquil in Ecuador
Senior biochemistry thesis: anti-cancer protein prenylation treatments (Presented as Student Lecture)
Researched optical properties of copolymer fiber optic strands (Student Lab Assistant)
Hoffman LaRoche Biology Internship, Researched rates of ion absorption in chlamydomonas cell membranes
PROFESSIONAL EXPERIENCE
Weiss & Arons, Chicago, IL March, 2016 – Present
Attorney
Supporting a Chinese chemical company’s expansion of emission control product sales in the USA
Supporting a Chinese textile company’s expansion of robotic manufacturing operations in the USA
Negotiated a HIPAA-compliant contract for a $5 M/year, third party beneficiary, medical device trial
Drafting, licensing, and successfully prosecuting patent applications in technologies to include:
oBio-Med: bone fixation devices, bone grafting cages, bone setting pins, root canal obturation materials, and oral surgery tissue fixatives
oIT: data cryptography, HADOOP distributed data systems, manufacturing, robotics, e-commerce, and web-sales
Ecolab, Naperville, IL August, 2008 – February, 2016
In-House Attorney
Negotiated, drafted, and executed over 150 contracts
Chief IP Counsel for mining, papermaking, oil extraction, and food services divisions
Counseled a Fortune 500 chemical company’s managers, sales representatives, vice presidents, and other officers and stakeholders regarding complex legal matters, including: HIPAA, CPNI, FCPA, transactions, patentability of inventions, supply and sales contract negotiations, intellectual property, dispute avoidance, litigation pros and cons, regulatory oversight, liability mitigation, insurance exposure, bankruptcy, antitrust, mergers, asset and company acquisitions, and divestitures <<Continued on next page>>
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Types of contracts negotiated and drafted include: B2B contracts, complex IP transactions, sales agreements, government contracts, material transfer agreements, supply agreements, joint ventures, trial agreements, joint development agreements, co-marketing agreements, clickwrap software agreements, master service agreements, government grant applications, subrogation agreements, champerty agreements, property easements, mutual litigation agreements, mutual defense agreements, technology partnerships, data segregation agreements, contingent sales agreements, non-disclosure agreements, technology escrow agreements, license agreements, patent sales and purchase agreements, technical assistance agreements, and intra-company agreements
Representative (publicly disclosed) contract examples include:
oAPEX Japan: Supported Japanese JV partner Katayama with sales of paint detackifiers to automobile manufacturers such as Ford, and Honda, >$3M/ year
oCOREXIT: Supported sales, supply, performance, and indemnity contracts with multiple parties and US EPA for chemical dispersants to BP to rescue Gulf of Mexico biology and ecology, $15 M
oGrey Matter: Drafted and negotiated terms for worldwide joint product development, sales, and distribution agreement with 3M for silica-based investment casting of precision metal parts, >$7 M/year
oPurate: Performed due diligence reviews and price modeling for purchase of in situ generated chlorine disinfectant business from AkzoNobel, $23 M
oOxiPro Monitor: Drafted and negotiated terms for sale of monitor device used to feed biocides into paper manufacturing processes to International Paper and Kimberly-Clark, >$15 M/year
oRefined Knowledge: Drafted and negotiated terms for sale of CPNI, data mining, monitoring, and responsive sale of services to Chevron for oil refineries, >$10 M/year
oTween 80: Drafted and negotiated development, ownership, and sales, terms for joint development agreement for efficiently emulsifying precursors to UST for construction supply equipment, >$3 M/year
o3D TRASAR: Drafted and negotiated terms for technology escrow and supply purchases of reactor devices, fluorescent chemicals, and circuit boards from numerous German and Swiss suppliers
Prosecuted to issue patent applications for wide range of green, eco-friendly, and sustainable improvements and technologies to include:
oIndustrial / manufacturing applications for: automobile parts manufacture, automobile painting, steel casting, aluminum refining, petrochemical refining, microchip production, papermaking, pharmaceuticals, packaging materials, polymer (polyamide) synthesis, and precision machine parts
oSilicon-based technology including synthesis and commercial applications of: zeolite catalysts, kaolinites, pozzolans, colloidal silica, siloxane polymers, silica-based nano-particles, and silicon casting molds
oBiotechnology and chemistry including: bacteria biosynthesis of chemicals and precursors, biosynthesis of polymers, carbohydrates, and organic acids, biological control of pathogenic organisms, remediating biological resistance to biocides and disinfectants, and bio-informatics-data analysis
oRemote sensing devices utilizing: fluorescence, tagged active molecules, inert radio tracers, electronegativity, vapor emissions, and chromatography
Joined Ecolab Brazil Board of Directors, thereby closed various deals with the government of Brazil
Successfully collaborated with other members of a worldwide legal and business team including colleagues in: Brazil, Argentina, Mexico, Germany, Australia, Singapore, China, Japan, Russia, Finland, and Canada
Ethics experience to include:
oCounseled clients regarding compliance with Foreign Corrupt Practices Act (FCPA)
oTaught CLE and company-wide seminars on duty of care, confidentiality, conflicts of interest, whistleblowing, and financial propriety
oAssisted with operation of company ethics hotline
Performed due diligence reviews for M&A (mergers & acquisitions) including:
oNalco-Omnicorp Africa acquisition
oNalco-Quantum acquisition
oEcolab-Nalco merger (>$1B)
oEcolab-Champion merger (>$1B)
Negotiated real estate easement with City of Naperville for construction of an arterial road on company land
Proved compliance with EPA regulatory approval process, allowing products to remain on the market
Reviewed advertisements for compliance with trademark, patent, copyright, and truth in advertising laws
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Managed various legal projects including: reducing inventory, eliminating products, setting budgets, and resolving intra-company disputes regarding selections between competing strategies, and responsibilities
Reviewed intellectual property landscapes to formulate product clearance, FTO “freedom to operate”, patent validity, claim infringement, and practice strategies/ theories, and post grant reviews (Reissue, Ex Parte Reexam, Inter Partes Reexam, & IPR - Inter Partes Review) increasing global product offerings
Managed product development “stage and gate” committees resulting in profitable product launches
Conducted department activities using software and websites including PAIR, EFS, Lecorpio, Serengeti, Thomson IP, and FIP
Vidas, Arrett, & Steinkraus, Eden Prairie, MN March, 2005 – June, 2008
Attorney
Negotiated real estate easement with City of St. Louis Park for subterranean sewer/storm water right of way
Drafted and successfully prosecuted patent applications in bio-medical, drug-eluting devices, optics, software, electrical, cardiovascular devices, mechanical, chemical, transportation, and automotive arts
Counseled large, mid-sized, and start-up companies on licensing and financing their IP portfolio
Developed claim construction arguments in support of Markman hearings in patent litigation
National American University, Brooklyn Center, MN May, 2006 – August, 2007
Law Instructor (Part Time)
Taught Semester-Long Lectures for: Tax, Administrative, Environmental, Real Property, Civil Procedure, Ethics, Business, and International Law, for classroom and online legal and MBA programs
Chicago-Kent Legal Clinic, Chicago, IL February, 2002 – March, 2005
Of Counsel / Law Clerk
Drafted computer software and automotive patent applications
Applied for and obtained registered trademarks
Argued motions in civil court and housing court administrative hearings
City of Chicago, Department of Environment / Department of Law, Chicago, IL
Law Clerk October, 2001 – June, 2004
Received >$2M grants by drafting applications to the United States Environmental Protection Agency
Conducted real estate field investigations using GIS (Geographic Information System) technology such as GPS, laser range-finding, aerial photography, subterranean analysis, and landmark proximity
Conducted hundreds of real property title searches in both Torrens and Plat recording systems
Produced maps for long term economic plans plotting current and future locations of specific categories of industrial, commercial, and residential activities
Drafted and assisted with filing of dozens of administrative citations for the Illinois Pollution Control Board
Counseled O’Hare International Airport officials on pollution regulations, avoiding fees and penalties
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AWARDS
Twin Cities Legal Department of the Year, Co-Winner February, 2015
National Law Journal
CALI Excellence for the Future Award, International Law June, 2003
Illinois Institute of Technology
INTELLECTUAL PROPERTY WORK SAMPLES
Patent Drafting Samples
US 9,290,802 Describes synthesis and use of polyamide compositions
US 9,290,802 Describes apparatus using qPCR and DNA analysis to improve paper manufacturing
US 9,063,080 Describes apparatus for using liquid surface refraction to improve manufacturing efficiency
US 8,716,028 Describes apparatus using optical wavelength absorption to enhance microchip manufacture
US 8,992,780 Describes method to eliminate sulfide emissions during food manufacturing processes
Patent Prosecution Samples (Prosecuted over 100 Applications to issue as US Patents)
US 9,858,558 Amendment Filed 8/18/2017, overcame obviousness rejection for ATM payments system
US 9,534,189 Appeal Brief filed 7/21/2014, successfully argued 35 U.S.C. § 112 claim support rules
US 8,366,877 Amendment filed 11/08/2012, successfully argued proper application of Best Mode rule
US 8,247,593 Appeal Brief filed 11/14/2011, demonstrated proper application of Analogous Structures rule
US 8,282,835 Amendment filed 07/25/2012, overcame obviousness rejection using Pourbaix Technique
Patent Litigation Samples
Civil Action 1:12-cv-03009 Managed litigation involving a patent family to successful settlement, preserving a >$3M/year contract (Watershed Litigation)
Civil Action 1:13-cv-05344 Managed litigation to successful settlement, protecting exclusivity for a “customer door opening” technology in a >$23M/year market (OxiPro Litigation)
PUBLICATIONS / PRESENTATIONS
Using Protein Prenylation as a Potential Anti-Cancer Treatment, Author October, 1997
City University of New York, Lecture Presentation
Using Epistemic Pragmatism to Define Self-Determination, Author November, 2001
Chicago Kent College of Law, Lecture Presentation
Trademark and Copyright Due Diligence in Corporate Transactions, Co-Author August, 2012
American Bar Association
With Integration, Intellectual Property Takes on Added Value, Co-Author September, 2012
Ecolab Insider
Don’t Lose Priority: Best Practices Under First to File, Co-Author December, 2012
LexisNexis
Executive Legal Insight on the Top 10 IP Cases of 2012, Co-Author March, 2013
World Congress
Minnesota Homeless Youth Handbook (Chapters 2 and 11), Author September, 2014
Southern Minnesota Regional Legal Services
Patents vs. Trade Secrets, How to Decide Which to Use, Author November, 2014
Illinois Paralegal Association
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REPRESENTATIVE PAST/PRESENT CORPORATE CLIENTS (Information in Public Record)
Ecolab USA
ATK
CHUBB Insurance
Bank of America
Danaher (KaVo Kerr)
Boston Scientific
REFERENCES
Joel Weiss, Attorney, Partner, Weiss & Arons
William Ding, Director of International Product Management, Elkay
Laura DiLorenzo, General Counsel, MARS
Paul Linden, Senior Engineer, Ford Motor Company
Fred Naider PhD, Biochemistry Professor, Provost,
College of Staten Island, City University of New York
John Burtis, Senior Counsel, Imation Information Technology
Former Chief Intellectual Property Counsel, Ecolab
Tony Zeuli, Attorney, Partner, Merchant & Gould
Jonathan Grad PhD, Attorney, Partner, Vidas Arrett & Steinkraus
Bryan Schertzer PhD, Innovation & Technology Group Director, ITW Polymers & Fluids
Chris Neavolls, Executive Vice President – Real Estate Development, Novak Construction
William Anderson, Attorney, Christianson Fonder
Liliya Lund PhD, Staff Scientist Biocides, Ecolab
Gary Furman PhD, R&D Manager Paper Science, Ecolab
Francois Balto PhD, R&D Manager Colloidal Silica, Ecolab
Wayne Carlson PhD, R&D Director Air Quality, Ecolab
Lise Delain PhD, Water Program Leader, Ecolab
Daniel Schwarz PhD, Senior Research Chemist Water Purification, Ecolab 630-***-****
Joseph Miknevich, Senior Consultant, Chemical Engineering, Ecolab
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CASE STUDIES (Information in Public Record)
Real Estate Experience
A client approached me asking for assistance in obtaining a construction permit to expand their facility. A regulatory agency initially denied the request because the expansion would be in proximity to a subterranean public sewage and storm water pipeline running under the client’s property. I reviewed the title records and determined that the agency had only obtained an easement for storm water and was transporting sewage under the property without an easement. After intense negotiations, which included a threat to sue for trespassing, the regulatory agency agreed to issue the construction permit.
Supply Chain Experience
A client approached me for assistance with a modified version of a product offering. The modified product used an electrolytic reactor in the place of standard water and chemicals. The only supplier of a suitable reactor was overseas, had inadequate manufacturing capabilities, and was both a segment competitor and was soliciting supply business with our competitors. I negotiated and drafted a contract favorable to the client which delineated, required supplier investment in manufacturing capabilities, consumer segment allocation, and royalty divisions. The executed contract also included insurance recourses to address failure to fulfill supply orders and a technology escrow to protect against potential insolvency of the supplier.
Manufacturing Experience
A client approached me for assistance with modifying our allocation of manufacturing capabilities. A very large, very important, very desperate customer wished to enter into a requirements contract at a very high purchase price, for vast quantities of a product over a very short period of time. Fulfilling this contract required breaking supply contracts with other clients and re-tasking previously allocated manufacturing capabilities. I negotiated with the other clients to break those contracts for mild compensatory damages, which were paid for by the very large client. I even ended up increasing goodwill with the other customers by demonstrating that my client was very dependable and could be relied upon in an emergency.
International Law Experience
A client approached me for assistance with negotiating a service for service contract between the client’s Germany subsidiary and a customer in the Netherlands. A complexity arose when I discovered that the client’s inter-company agreement between the client’s American parent and the German subsidiary prohibited such a contract. I researched and discovered that the prohibition was for tax reasons, and worked with the client’s tax department to draft and execute a modification of the inter-company agreement. The modification continued to protect the client’s tax interest but also allowed the service for service contract to be executed.
Team Management – Budgeting
A vice president asked me to manage a team producing a patent vitality report. This report associated past and expected patent expenses with past and expected sales for products covered by patents. The report was to be used to efficiently allocate scare funds to recoup maximum value from the patent portfolio. I first assembled and managed a team which organized a procedure to determine which patents corresponded to which products and where the actual cost information could be found. I then assembled and supervised a team to accurately collect the data and populate the report. I gave my team adequate freedom to efficiently collect and input the data but provided firm guidance and supervision guaranteeing precision and meeting the report’s deadline.
Team Management – Cost Control
A vice president asked me to manage one of the teams looking to reduce company expenses to reduce debt load. I directed my team to look into costs associated with product offerings. I identified that internal sales processes were generating redundant product listings which incurred significant overhead supply chain, labelling, and regulatory costs. I then supervised as the team determined how new product listings were created and drafted control rules determining who, and under what conditions, could new products be created. Overall savings from eliminating the redundancy was more than $100K.
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