Biotechnology/chemical Patent Counsel
Resume:
WILLIAM F. DEE
Winchester, MA
********@*****.***
High-performing intellectual property lawyer with over 20 years experience working at both law firms and in-house positions. Graduated August 2015 with a Masters in Biotechnology. Strengths include deep knowledge of biotech and medical device technology, intellectual property law and the management of litigation, in-house client counseling, and R&D collaborations.
EXPERIENCE
MIT (Hamel Lab), Boston, MA 2015-Present
Conducted original research on rectangular bioreactor regarding the diffusion of dissolved oxygen and research on a proposed reactor for oxygenating sensitive animal cells.
MIT, Cambridge, MA 2010
Licensing and Contract Counsel at MIT Office of Sponsored Programs.
Worked at the Office of Sponsored Program for 12 weeks while the department was short-handed due to a maternity leave. While there, I negotiated patent licenses and contracts for sponsored research at the university.
Covidien, (formerly Tyco Healthcare) Mansfield, MA 2005-2009
Senior Intellectual Property Counsel
Managed all intellectual property matters relating to the largest R&D project at the company (Negative Pressure Wound Therapy in preparation for our entry into a market dominated by a well entrenched competitor;
Directed team of six in all searching and opinion work and counseled management on possible ways to minimize IP risk;
Managed all intellectual property matters, filed or directed filing of over 12 original applications per year;
Prepared and reviewed FTO and infringement opinions, negotiated licenses;
Trained over 400 engineers in IP matters.
Tyco Engineered Products & Services, Exeter, NH 2003-2005
Intellectual Property Counsel
Oversaw doubling of patent portfolio in area of industrial components
and safety products;
Performed proactive IP training for personnel in aspects of IP law and contract issue;
Wrote and argued successful copyright appeal resulting in dismissal of litigation.
Cabot Corporation, Boston, MA 2001-2002
Intellectual Property Counsel
Prosecuted and supervised outside counsel in both domestic and international patent
cases;
Counseled business teams in matters relating to invention disclosures, negotiated and drafted joint development, confidentiality, and consulting agreements.
Edwards & Angell, LLP, Boston, MA 1999-2001
Associate
Co-counsel and de-facto technical advisor on alleged defective solar panels on deployed
satellites.
Sheehan, Phinney, Bass + Green, PA, Manchester, NH 1998 –1999
Associate
Prepared a winning summary judgment brief in a major trade dress infringement action,
affirmed on appeal by the Seventh Circuit.
Pennie & Edmonds LLP, New York, NY 1995 –1998
Associate
Successfully managed discovery for a major patent litigation concerning pharmaceutical
infringement litigation on two continents.
Arthur D. Little, Inc., Cambridge, MA 1987 – 1994
Consultant
Environmental, Health and Safety Consulting
EDUCATION
Northeastern University, College of Science, Boston, MA 2015
Master of Science, Biotechnology
Boston University, School of Law, Boston, Massachusetts 1995
Juris Doctor
Boston University, School of Management, Boston, Massachusetts 1995
Master of Business Administration
Northeastern University, College of Engineering, Boston, Massachusetts 1987
Bachelor of Science, cum laude,
Chemical Engineering
BAR ADMISSIONS
New York 1996 New Hampshire 1999
Massachusetts 1996 USPTO 2000
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