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Intellectual Property Attorney

Location:
Highland, Indiana, United States
Posted:
October 19, 2016

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Resume:

Michael D. Zaronias

**** ***** ***** ********, ******* 46322 m acw44i@r.postjobfree.com 219-***-****

OBJECTIVE

Looking to apply substantial experience in intellectual property law as in-house counsel or law firm associate to utilize critical thinking, complex problem solving and efficient decision making skills.

EXPERIENCE

Lexis Nexis New York, New York July 2016 - Present Content Attorney

● Prepare federal and state intellectual property and media law content providing practical guidance

● Review and edit content of colleagues

Olson & Cepuritis, Ltd. Chicago, Illinois July 2015 - April 2016 Associate Attorney

● Managed patent portfolios of small and large companies involving foreign and domestic patent preparation and prosecution in mechanical arts, biologics, wireless communication, electro-chemical arts, and semiconductor manufacturing

● Counseled clients on IPR, drafted IPR responses and participated in defending IPR

● Prepared patentability and patent infringement search requests and prepared opinions letters

● Participated in discovery document review

IPXI Holdings, LLC. Chicago, Illinois June 2012 - April 2015 Senior Associate Attorney

● Identified licensable technology and evaluated license field of patent portfolios

● Identified potential products and services utilizing patented technology

● Conducted due diligence and managed external diligence of third-party patent providers, including file history analysis, invalidity analysis, and chain of title

● Prepared claim charts and managed third party preparation of claim charts directed to products, service or technical standards

● Drafted internal analysis reports identifying licensable field, scope of claims, strength of patent portfolio

● Developed organizational methods for tracking diligence and maintaining records

● Communicated with corporate, university, laboratory, independent

● IP owners and inventors to identify licensable patent portfolios

● Prepared and conducted company-wide presentations on changes to legal landscape

● Managed outside counsel with development and prosecution of in-house patent and trademark properties

Cook Alex, Ltd. Chicago, Illinois August 2002 - April 2012 Intellectual Property Associate Attorney

Patent Experience

● Prepared and prosecuted foreign and domestic patent applications in the mechanical, electro-mechanical, pharmaceutical formulation, medical device, food science, and chemical arts

● Managed the patent portfolios of large corporations as well as individual inventors and directly interfaced with outside counsel and inventors

● Performed patentability and patent infringement searches and prepared opinions letters

● Conducted due diligence for acquisitions

● Prepared license agreements

Trademark & Copyright Experience

● Prepared and prosecuted trademark applications in U.S. and foreign jurisdictions

● Filed and defended opposition and cancellation proceedings

● Conducted and evaluated clearance searches

● Prepared and responded to cease and desist letters and negotiated infringement matters

● Drafted standard license agreements as well as reviewed outside agreements

● Prepared and filed copyright applications with the Library of Congress Intellectual Property Litigation Experience

● Drafted complaints, answers, motions, and memoranda in patent/trademark infringement matters

● Drafted interrogatories and requests for production and responded to discovery requests

● Formulated litigation strategies and advised clients on litigation and alternative dispute resolution

EDUCATION

Valparaiso University School of Law Valparaiso, Indiana May 2002 Juris Doctorate, GPA 3.61

● Magna cum laude

● Course Honors in Intellectual Property Law, Secured Transactions and Family Law

● Semester Honors in 5 of 6 Semesters

● Heritage Scholarship $15,000/year (2/3 to 5/6 of total tuition)

● Federal Judicial Externship

● Legal Writing/Research Teaching Assistant

● Moot Court Society

Indiana University Northwest Gary, Indiana

B.A. Chemistry, GPA [GPA needed]

H onors:

● Minor: Mathematics GPA 3.29 / 4.00

● Dean’s List

● Research Assistant for A.F. Lindmark’s Ph.D. kinetic study of ion pair formation

SKILLS

● Highly computer proficient

● Microsoft Office

● Lexis

● Westlaw

● EFS Web

LANGUAGES

Greek

INTERESTS

Biking, Cooking, Reading

AFFILIATIONS

Indiana Bar

Illinois Bar

Patent bar

References are available upon request.



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