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Intellectual Property United States

Location:
Aliso Viejo, CA, 92656
Posted:
December 28, 2023

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Resume:

Martin Carbajal

** ********, ***** *****, ** ****6 • Phone: 303-***-**** • E-Mail: ad19rr@r.postjobfree.com Licenses and Professional Affiliations

California State Bar, state bar number 337606, admitted June 2021 United States Patent and Trademark Office, registration number 80878, admitted June 2022 Howard T. Markey Intellectual Property American Inn of Court, associate member, and treasurer Orange County Bar Association, member

Orange County Intellectual Property Law Association, member Experience

Hankin Patent Law APC, Los Angeles, CA

Associate Patent Attorney December 2022-Present

§ Patent Prosecution:

o Draft and prepare provisional, nonprovisional, patent cooperation treaty (PCT) utility and design patent applications

o Draft responses to Office Actions and conduct interviews with USPTO examiners o Draft and record assignments of patents and trademarks o Draft declarations, IP terminal disclaimers, and petitions to revive patent applications o Draft letters of patentability, noninfringement, and freedom to operate o Conduct prior art research on patents and trademarks

§ Litigation:

o Draft infringement and invalidity contention briefs, cease and desist letters o Draft and negotiate intellectual property license agreements o Draft responses to cease and desist letters

o Draft settlement agreements

§ Client intake and advice:

o Conduct client intake and invention disclosure interviews o Advising clients on their intellectual property rights and suggesting design changes to avoid infringement

o Draft reporting letters to clients explaining the office actions and reports and their options

§ Engineering advice:

o Advise engineering teams on how to avoid infringement and infringing designs o Evaluate invention disclosures with engineering teams

§ Technologies include telecommunications, navigations, radio frequency communications, radio detection and ranging (RADAR), optical targeting, Internet of things (IoT), Artificial Intelligence (AI), image recognition, blockchain and distributed ledger applications, residential power distribution, radio frequency cancer treatment, hydroponics, printer software, software application, biogas, and mechanical systems Brown Wegner LLP, Irvine, CA October 2021-December 2022 Associate Attorney

§ Complex business, Patent, Trademark, Copyright Litigation o Drafted state, federal, and Court of Appeals for the Federal Circuit legal memorandums, law and motion briefs, protective orders, response and reply briefs, complaints and answers, motions for summary judgment, settlement agreements, demand and cease and desist letters, and proposed court orders o Drafted responses to patent, copyright, and trademark infringement actions o Drafted patent, trademark, and copyright infringement action analysis o Propounded and responded to discovery requests

o Conducted and defended depositions

o Represented clients in the U.S. Court of Appeals for the Federal Circuit to defend the invalidation of a challenged patent in an inter partes review following a complaint of infringement o Represented clients in patent, trademark, and copyright infringement settlement negotiations o Represented clients before state and federal courts and settlement conferences Martin Carbajal

14 Westerly, Aliso Viejo, CA 92656 • Phone: 303-***-**** • E-Mail: ad19rr@r.postjobfree.com o Researched complex business litigation issues, including choice of law in multidistrict litigation, statute of limitations and tolling situations, attorney-client privilege protection of a testifying attorney, court enforcement of contract provisions, and tax fund recover penalties

§ Interpreted state and federal regulations and provide advice to clients

§ Drafted corporate privacy policy

United States Patent and Trademark Office, Denver, CO Intern September 2019-December 2019

§ Conducted patent classification, prior art search, patent application examination

§ Prepared and drafted non-final and final office actions for applicants

§ Examined patent applications using the manual for patent examination and prosecution (MPEP), interviewed patent applicants, and evaluated patentability of patent applications for patentability, novelty, obviousness, written description

§ Drafted legal memorandum to the director of the USPTO’s Rocky Mountain Regional Office detailing novel applications and techniques of applying copyright, trademark, and patent protections of cultural intellectual property rights

§ Debriefed inter partes review (IPR) and precedential opinions briefs and oral arguments with administrative law

(PTAB) judges

University of Denver Sturm College of Law Veterans Advocacy Project, Denver, CO Student Attorney August 2018-December 2018

§ Drafted law and motion briefs in support of veteran claims for benefits and character of discharge upgrades

§ Represented veterans at the Department of Veterans Affairs regarding benefit claims

§ Represented veterans at District Court, U.S. Court of Appeals for Veteran Claims, the Military Discharge Review Board, and the Board of Corrections for Military Records with their character of discharge upgrade

§ Researched legal questions regarding veteran benefits

§ Conducted intake interviews

§ Conducted client and case management using CLIO legal software and practice management software Federal Aviation Administration (FAA), Los Angeles, CA Electronics Engineer (working remotely while in law school full-time) December 2011-October 2021

§ Lead instrument landing system (ILS) engineer, lead obstruction evaluation engineer, and lead support engineer for ILS continuity of service, and performed complex radio frequency (RF) obstruction studies at airports using geometric and physical optics theory, geometrical and physical theory of diffraction, and method of moments

§ Drafted Department of Transportation, Federal Aviation Administration policy regarding radio navigation aids

§ Advised FAA engineering teams on International Civil Aviation Organization (ICAO) regulations regarding radio navigation aids

§ Co-authored maintenance handbook, evaluated and approved national change proposals, and engineering design and installation packages

§ Tested ILS propagation anomalies, antenna, RF distribution network, transmitter, control systems, power systems, and radiation patterns

§ Developed testing protocols, procedures, and circuit designs with system design engineers

§ Test equipment: oscilloscope, RF network analyzer, communication protocol analyzer, optical network analyzer, multimeters, spectrum analyzer, and telecommunication test sets National Air Space Technical Evaluations Manager, Los Angeles, CA December 2011-November 2012

§ Planned and organized objectives, set priorities, assigned task responsibilities to employees, monitored and evaluated performance, developed employees, approved leave, interviewed new applicants, and made disciplinary actions

Air Traffic Sys. Specialist, San Diego, CA December 2010-December 2011

§ Monitored and logged facilities and services of the National Air Space (NAS Air Traffic Sys. Specialist, Denver, CO August 2001-December 2010 Martin Carbajal

14 Westerly, Aliso Viejo, CA 92656 • Phone: 303-***-**** • E-Mail: ad19rr@r.postjobfree.com

§ Performed maintenance, modification, and certification of navigation, communication, telecommunications, fiber optic, weather, radio frequency interference, and automated air traffic control subsystems United States Navy, Virginia Beach, VA

Aviation Electronics Tech. October 1997-August 2001

§ Performed maintenance activities on avionics systems of the F14B, including RADAR, guidance and optical targeting, electronic countermeasures, radio communication, cryptography, navigation, and computer processors

§ Operated test workbench for removable avionic systems, avionic test sets, missile test sets, navigation simulation test sets, and RF electronic countermeasure test sets

§ Test equipment: oscilloscope, network analyzer, communication protocol analyzer, optical network analyzer, and multimeters

Education

University of Denver Sturm College of Law, Denver, CO Juris Doctor May 2020

§ Certificate: Intellectual Property Law Certificate

§ Activities: Intellectual Property Inn of Court, Student Member, Intellectual Property Law Society, Member

§ IP Inn of Court

University of Colorado Boulder

Bachelor of Science in Electrical Engineering December 2010 Harrity LLP Academy

Patent Prosecution

§ Review USPTO and International Search Report (ISR) office actions

§ Amend claims

§ Draft office action response

Patent Drafting Course October 2022

§ Inventor Interview and intake

§ Patent Prior Art Search

§ Initial Invention disclosure

§ Draft Patent Claims

USPTO

Trademark Boot Camp October 2022

§ Trademark search and analysis

§ Application drafting

§ Filing application using Trademark Electronic Application System (TEAS) IPWatchdog Institute

Patent Practice Training Course September 2022

§ Prior art and Patentability search

§ Provisional, Utility, and Design Patent application drafting

§ Basic Claim drafting techniques and strategies

§ Patent Prosecution and effectively responding to office Actions Practicing Law Institute

Patent Office Exam Course May 2022

American Intellectual Property Law Association

Patent Prosecution Boot Camp March 2021



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