Office Insurance

ANNA LOUISE VERDERAME, ESQ.

**********@***.***.*** 703-***-****

LEGAL EXPERIENCE

Greenblum & Bernstein, Reston, VA

Associate May 2014 to present

Prosecute applications directed to the following subject matters: polymers, photochemistry, metals, batteries, fuel cells, solid and liquid lubricants, carbonaceous materials, oil and gas, catalysts, food, semiconductor devices and processing methods, rubbers, plastics, pharmaceutical dosage forms and excipients, powders, adhesives, filters, fibers, contact lenses, etc.

Analyze office actions and communicate in-person, via e-mail, or via fax with foreign counsel and foreign clients, providing all potentially effective options for responding to them. Usually, I also recommend one option and explain my recommendation.

Strategically and successfully utilize USPTO appeals processes, including the pre-appeal brief conference request for review. I have filed more than five appeal briefs, and my success rate, so far, is one hundred percent. I have filed about ten pre-appeal brief conference requests for review, and my success rate (reopening of prosecution or allowance) is greater than fifty percent. I have also filed more than five reply briefs.

Successfully explain patentability arguments to and negotiate with examiners at the USPTO.

Performed freedom to operate searches, identifying all relevant patents for clients to consider.

Assisted in preparation of freedom to operate opinions.

Advised clients regarding patentability and infringement of claims in a competitor’s patent application, and prepared and filed a third-party submission on their behalf, citing relevant prior art and explaining its relevance to the competitor’s claims.

Advised clients regarding viability of initiating post-grant review or inter partes review proceedings, helping them decide the best strategy for challenging a competitor’s patent.

Research issues, e.g., issues relating to double patenting and priority (foreign and domestic), and provide memoranda on these issues that help our litigation team represent their client.

Rework applications that were originally filed in a foreign country so that they conform with U.S. patent practice. For example, I amend the claims to avoid possible objections or indefiniteness issues.

Drafted an application directed to in-mold labelling technology.

Prepare and file continuation and divisional applications.

Present to clients from Japanese and Chinese law firms at our yearly seminar. I discuss foreign and domestic priority issues, updating my presentation yearly to reflect any new developments in this area.

Give presentations for my colleagues (five so far) summarizing relevant decisions (particularly to patent prosecution) from the Patent Trial and Appeal Board, the Federal Circuit, and district courts. I also attend weekly luncheons where my colleagues give presentations summarizing the same. Patent Agent March 2013- May 2014

Prosecute applications directed to the following subject matters: polymers, photochemistry, metals, batteries, fuel cells, solid and liquid lubricants, carbonaceous materials, oil and gas, catalysts, food, semiconductor devices and processing methods, rubbers, plastics, pharmaceutical dosage forms and excipients, powders, adhesives, filters, fibers, contact lenses, etc.

Analyzed office actions and effectively communicated all options for responding to them to clients.

Successfully explained patentability arguments to and negotiated with examiners at the USPTO. United States Patent and Trademark Office, Alexandria, VA Patent Examiner September 2006- March 2013

Examined applications classified in USPC class 430/subclasses 1, 2, and 269-331, and class 359. These classes/subclasses include optical systems and elements, photolithographic and holographic methods for forming optical and electronic devices, optical and electronic devices themselves, dyes and pigments for use in optical and electronic devices, etc.

Found relevant prior art and properly applied relevant sections of the MPEP in Office Actions, leading to issuance of quality patents.

Drafted four examiner’s answers, and was affirmed, in full or in part, seventy-five percent of the time.

Proficiently used search tools including STN® and SciFinder® to locate relevant prior art.

Received three annual performance awards for exceeding production goals and was promoted from GS7 to GS13. George Washington University Law School, Health Insurance Counseling Project, Washington D.C. Student Advocate September 2012- May 2013

Counseled clients in-person and over the telephone regarding issues relating to Medicare and Medicaid.

Effectively communicated with government agencies, pharmacies, etc. on behalf of clients to resolve issues. EDUCATION

The George Washington University Law School, Washington, DC J.D. (evening student) August 2010-July 2013

Participated in the Health Insurance Counseling Project Clinic (Fall 2012 and Spring 2013).

Participated in the Giles Rich Moot Court Competition (Fall 2011 and 2012).

Member of the Student Intellectual Property Law Association.

Received the top score (grade of A+) in my patent law class. University of Rochester, Rochester, NY

B.A. Chemistry August 2002-May 2006

Member of the women’s ice hockey club team.

Member of the Chemistry Council.

Member of Phi Sigma Sigma Sorority.

PROFESSIONAL MEMBERSHIPS AND ACTIVITIES

Member in good standing, Virginia State Bar June 2014 to present Member in good standing, Patent Bar May 2013 to present Member and rising liaison co-chair, Pauline Newman IP Inn of Court September 2014 to present Member, Intellectual Property Owners Association September 2015 to present Mentor and science fair judge, D.C. STEM Network January 2015 to present

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