Management Software
Resume:
Devon K. Grant
Devon K. Grant
********@*****.***
Education
Rutgers Business School – Executive Education, June 2015 Mini-MBA for Engineers and Technology Managers
Howard University School of Law, Juris Doctorate, May 2002 Awards & Activities: Merit Scholar and Phi Delta Phi Legal Fraternity Georgia Institute of Technology, Bachelor of Electrical Engineering, December 1996 United Technologies – Pratt & Whitney, Minority Scholarship, 1991 – 1996 Bar Admissions
United States Patent & Trademark Office, Reg. No. 57,036 District of Columbia, May 2004
New York State Bar, January 2003
Summary of Legal Experience
Over ten years of experience which includes, but is not been limited to, performing domestic and foreign patent preparation and prosecution, patent and copyright portfolio management, management of outside counsel, IP due diligence in mergers and acquisitions, product release due diligence, open source compliance, IP training, trademark opinions, patentability and infringement opinions, legal research, drafting copyright agreements and software licensing agreements, license and contract review, and litigation support.
Legal Experience
TomTom International, B.V., Atlanta, GA - Amsterdam, the Netherlands Aug. 2012 - Present Patent Counsel – Patent Prosecution Manager - Global Intellectual Property Team of the Year
(2015)
Draft responses to communications issued by the United States Patent & Trademark Office and the European Patent Office relating to patent applications for sports devices, navigation hardware and software. Review patent search reports to assess the potential success of obtaining patent protection for various products in order to streamline subsequent prosecution. Review and manage the prosecution of direct reports. Provide patent portfolio management for the Chinese and Japanese portion of the patent portfolio. Perform patent mining and training, as well as patent portfolio review for sales, purchases, and licenses. Review and analyze patent assertions and patent lawsuits to provide feedback to management regarding possible responses to patent owners. Review intellectual property terms in commercial agreements and litigation support. Draft infringement and invalidity opinions. Self-Employed Patent Attorney, Atlanta, GA Jan. 2011 – Jan. 2012 Performed all aspects of domestic patent preparation and prosecution in the electrical, business methods and computer software arts. Consulted clients regarding potential patent filings and patent strategy. Cisco Systems, Inc./Hope, Baldauff & Hartman, LLC, Atlanta, GA Mar. 2010 - Jan. 2011 Contract Patent Attorney
Managed outside counsel regarding all aspects of domestic and foreign patent preparation and prosecution. Provided patent and copyright training to engineers and management. Performed all aspects of domestic and foreign patent preparation and prosecution in the electrical, business methods and computer software arts. Representative technologies included software, firmware, and avionics. Devon K. Grant 2
Sun Microsystems, Inc., Menlo Park, CA July 2007 - Jan. 2010 Senior Patent Counsel
Managed outside counsel regarding all aspects of domestic and foreign patent preparation and prosecution. Assisted in obtaining copyright protection for software and firmware associated with the Systems and Microelectronics business units. Drafted, reviewed, and negotiated confidentiality/non- disclosure agreements. Provided intellectual property guidance relating to due diligence and integration for mergers and acquisitions. Advised on inbound and outbound technology licensing transactions. Provided guidance relating to intellectual property provisions in commercial agreements. Evaluated products prior to release to verify the security of intellectual property rights. Reviewed and evaluated software intended to use or be released under a variety of open source licenses. Reviewed and analyzed patent assertions. Provided patent and copyright training to engineers and management. Merchant & Gould LLC, Atlanta, GA Sept. 2005 - July 2007 Intellectual Property Associate
Performed all aspects of domestic and foreign patent preparation and prosecution of technology, including drafting applications, amendments, and opinions. Provided opinions with regard to patent clearance and patentability related to computer software and business methods. Representative technologies include financial services, computer software, telecommunications, and cable services. Needle & Rosenberg, P.C. Atlanta, GA Aug. 2004 - June 2005 Intellectual Property Associate
Performed all aspects of domestic and foreign patent preparation and prosecution in the electrical, business methods and mechanical arts. Representative technologies include Internet security, printing devices, and lighting components. Reviewed patentability opinions and freedom-to-operate opinions. Provided intellectual property legal research.
Dickstein Shapiro Morin and Oshinsky LLP, Washington, DC Sept. 2002 - July 2004 Intellectual Property Associate
Drafted intellectual property agreements, including software licensing and copyright agreements. Performed all aspects of domestic and foreign electrical/computer patent preparation and prosecution related to network communications, memory devices (DRAM, MRAM and CAM), CMOS imaging devices and optical devices. Provided patent and trademark legal opinions. Performed legal research, technology review, and document review for the patent litigation group. Co-authored report for the NAACP concerning Title VI as applied by the EPA.
Engineering/Technical Experience
Georgia Public Health Lab, Decatur, GA Jan. 2012 – Jun 2012 Contract Operations Analyst
Assisted lab staff and administration throughout the state of Georgia with login and application issues. Workstation setup and maintenance, server maintenance, assisted in the oversight of server upgrades and determined the power requirements of the server room. General computer and workstation support. Lockheed Martin Corporation, Marietta, GA Dec. 1997 - July 1999 Engineer
Designed, tested, and verified electronic test equipment for various pieces of avionics and electronics for aircraft produced by Lockheed Martin as well as management of production.
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