Multilingual Int Patent Attorney, Engineer, Strategist, Consultant

OSVALDO AMARAL

Permanent Address: email: *******.******@******.***

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Street Tel. +1-954-***-**** (cel.)

Pembroke Pines, Florida 33028 Taking USPTO Patent Bar Exam Soon USA Immigration Status: US Permanent Resident Since 2000 Initiating US Naturalization Process Soon

LinkedIn Page: https://www.linkedin.com/in/osvaldoamaral/

Multilingual International Patent Attorney, Engineer, Strategist, Consultant, IP manager with international business, legal and technology experience. Holds a Bachelor (B.S.) degree in Aerospace Engineering and a Juris Doctor (J.D.) specializing in International Law and Intellectual Property Short BIO

• Global Expertise: Lived and studied in Brazil, Argentina, the US and the UK, worked in Washington, DC, Mexico City and Miami and travelled extensively for business in more over 60 countries.

• Comprehensive IP Management: Advised individuals and enterprises of all sizes on all aspects of IP protection, including worldwide strategic patent and trademark preparation, prosecution, portfolio management, litigation, licensing, valuation and technology transfer.

• Industry Representation: Represented clients in diverse industries such as IT/software, telecommunications, transportation, clean technology, nanotechnology, aerospace, oil & gas, steel, banking, biomechanics and biomaterials and, lately, in the blockchain, healthcare, flying taxi, satellite and drone technology.

• Patent Achievements: Secured more than 4,500 MX utility and design patents as well as more than 1,000 international patents in jurisdictions including the US, CA, AU, EP, RU, JP, CN, KR, ZA, BR, AR, CO, CL, EA, IN, Middle East (GCC).

• Recognized Expert: Took Microsoft Corporation to the top of the Mexican patent issuance chart in 2010, Managed international patent portfolios for Pemex s R&D arm, Instituto Mexicano del Petróleo, Mexico s most prominent patenting and oil and gas institution.

• Current Role: Serving as an international strategic, business, technology and IP advisor for startups in the US (South Florida) and Latin America focusing on digital advertising, blockchain, healthcare, flying taxi, satellite, nanosatellites, additive manufacturing, commercial aviation and drone technology.

Professional Network

• Global Connections: Extensive contacts and access in innovation, technology, and IP communities across India, Australia, Japan, Singapore, Middle East, Europe, Latin America, Canada and the US.

• Thought leadership: Authored several articles on patent rights protection in Mexico and Latin America. Regularly attends and lectures at international IP conferences, including AIPLA, AIPPI, LESI, FICPI, ABPI and APAA.

• Visionary and Prolific: Known for being a visionary writer, speaker, and international business developer. Continuously updated on the latest technologies and business models through exposure to revolutionary technologies developed by represented startups. Professional Experience:

Amaral Consult Inc – ACSA IP

International Patent Attorney/Engineer/Strategist/Consultant Miami, Florida, USA

2016-Present

• Provide international, strategic, technology and intellectual property advisory services to startups in the US (South Florida) and Latin America

(Brazil and Mexico), focusing on disruptive technologies in sectors such as digital advertising, blockchain, healthcare, flying taxi, satellite, nanosatellites, additive manufacturing, solar technologies, commercial aviation and drone technology.

• Draft and prosecute utility and design patent applications, as well as International PCT and foreign patent applications in jurisdictions including US, Japan, EPO, Russia, China, South Korea, Brazil, Colombia, Australia, India, Canada, Eurasia, GCC. Possess deep expertise in the rules, regulations and procedures of the Mexican Patent Office, USPTO, and other major international patent jurisdictions.

• Review invention disclosures and conduct portfolio analyses; collaborate with inventors and patent review committees.

• Work with scientific and technical teams on a wide range of technologies including IT/software (IoT), telecommunications, transportation, clean technology, nanotechnology, aerospace, oil & gas, steel manufacturing, banking, biomechanics, biomaterials. Guide and direct proactive development of IP strategies and client counseling.

• Assess IP issues and provide timely counsel on IP issues.

• Conduct patent landscape mapping, third-party patent portfolio analysis, and freedom-to-operate, patentability, validity and infringement analyses.

• Assist with licensing and transactional matters.

• Review sales and promotional materials and programs for IP issues.

• Conduct competitive intelligence gathering and analyses.

• Advice and support patent litigation, including infringement and invalidity actions, and conduct initial infringement investigations and analyses.

• Develop and implement IP-related policies and procedures.

• Advise on patent monetization and technology transfer deals and activities.

• Lecture in IP/patent globally, particularly in North and Latin America, the Middle East, Europe, and Asia/Pacific.

Cluster Aeroespacial de Baja California

Strategic, Entrepreneurship, Innovation and IP Advisor Baja California, México

August 2017-Present

• Serve as international, strategic, entrepreneurship, innovation and IP advisor for startups and aerospace companies of all sizes within the Aerospace Cluster of Baja California, focusing on disruptive technologies in nanosatellites, commercial aviation, additive manufacturing and drone technology.

Stealth Mode Startup – Tapten, Inc.

International, Strategic and IP Advisor

March 2015-March 2021

• Leveraged international legal, business, scientific, and technical expertise to serve as an international, strategic, and IP advisor for a stealth mode startup developing disruptive technology in the digital advertising, search engine, and social media technology sectors. Olivares & Cia

International Patent Engineer/Attorney

Mexico City, Mexico

2003-2016

• Provided comprehensive advisory services on patents, trademarks, copyrights, and trade secrets, including strategic preparation, prosecution, and procurement of patents and trademarks in Mexico and globally. Managed patent portfolios conducted patent litigation and enforcement, and facilitated licensing, monetization, valuation, and technology transfer for various public and private enterprises, SMEs and individuals.

• Represented clients across diverse technologies such as IT/software, telecommunications, transportation, clean technology, nanotechnology, automotive, aerospace, oil & gas, steel manufacturing, banking, biomechanics and biomaterials.

• Successfully obtained and managed more than 5,000 patents and industrial designs in Mexico and internationally.

• Achieved a significant milestone by elevating Microsoft Corporation to the top of the Mexican patent issuance chart in 2010.

• Led the technical and legal aspects of high-profile patent enforcement. Infringement, and administrative appeal cases in software, cellular telecommunications (2G, 3G, 4G and LTE) and mechanical sectors

• Spearheaded patent and technology licensing activities for Mexican and international industrial conglomerates, facilitating the commercialization of patented technologies worldwide.

• Drafted and prosecute utility and design patent applications in Mexico, as well as International PCT and foreign patent applications in jurisdictions including the US, Japan, EPO, Russia, China, South Korea, Brazil, Colombia, Australia, India, Canada, Eurasia, and GCC. Demonstrated deep expertise in the rules, regulations and procedures of the Mexican Patent Office, USPTO and other major international patent jurisdictions.

• Reviewed invention disclosures and conducted portfolio analyses; collaborated with inventors and patent review committees.

• Worked with scientific and technical teams on a wide range of technologies, guiding the proactive development of IP strategies and providing client counseling

• Conducted patent landscape mapping, third-party patent portfolio analysis, and freedom-to-operate, patentability, validity and infringement analyses.

• Assisted with licensing and transactional matters, reviewed sales and promotional materials for IP issues, and conducted competitive intelligence gathering and analysis.

• Advised and supported patent litigation, including infringement and invalidity actions, and conducted initial infringement investigations and analyses.

• Developed and implemented IP-related policies and procedures.

• Advised in patent monetization and technology transfer deals and activities.

• Delivered lectures om IP/patent issues globally, particularly in North and Latin America, the Middle East, Europe and Asia/Pacific. Porter, Wright, Morris & Arthur

International Trade Law Externship

Washington, D.C.

2001-2002

• Conducted legal writing, research and advocacy in patent and trademark law, as well as international trade law (export, import, AD/CVD) for American and foreign corporations doing or planning to do business in the US and internationally.

Education

Juris Doctor (J.D.)

Concentrations: International and Intellectual Property Law Concentrations Michigan State University, Lansing, Michigan, USA

High Technology Law Summer Program

Santa Clara University School of Law, Santa Clara, California, USA Graduate Courses in Business Administration in Aviation (MBA/A) Embry Riddle Aeronautical University, Daytona Beach, Florida, USA Bachelor of Science (B.Sc.) in Aerospace Engineering Sigma Gamma Tau, National Honor Society of Aerospace Engineering Syracuse University, Syracuse, New York, USA

High School

GRADED – The American School of São Paulo, São Paulo, Brazil Middle School and High School

Lincoln American Community School, Buenos Aires, Argentina Additional Education:

• Training Course: Obtaining, Enforcing and Evaluating Intellectual Property Rights in Europe

Boehmert & Boehmert, Munich, Germany, 2007

• South East Asian Patent Drafting Training Course FICPI Academy of Education, Singapore, Singapore, 2006

• Global Aerospace Engineering Year Abroad, Mechanics of Flight Certificate Program

City University London, London, UK, 1993

Languages

• Portuguese (Fluent)

• Spanish (Fluent)

• English (Fluent)

• Italian (Advanced)

Hobbies

• Soccer

• Tennis

• Piano

• Krav Maga

IP/Technology Commercialization/Patent Speaking Engagements Around the World

• “Transforming the Aerospace Cluster of Baja California in a World Leader of Innovation”

Speaker, Seminar, Tijuana, Mexico, September 2017

Discussed strategies for fostering innovation within the aerospace sector in Baja California, highlighting key initiatives and success stories.

• "Computer Implemented Inventions – Protection Challenges before Different Laws and Regulations in Each Country" 2017 ABPI s International Congress on Intellectual Property, Rio de Janeiro, Brazil, August 2017

Explored the complexities of protecting computer-implemented inventions across various jurisdictions including Mexico and Brazil, emphasizing the differences in legal frameworks and regulations.

• “IP Opportunities in Middle East/N. Africa Region Oil & Gas, Chemicals and Others: Patenting and Exploiting Oil and Gas Technologies in Mexico/Latin America”

International Intellectual Property Law Association Annual Conference, Dubai, UAE, January 2015

Provided insights into patenting and commercializing oil and gas technologies in the Mexico and Latin America, focusing on strategic IP opportunities.

• "Protection of Intellectual Property Rights and Innovation in Emerging Markets"

Conference Lecture, Porto Alegre, Brazil, March 2014 Addressed the challenges and opportunities of protecting IP rights in emerging markets, with a focus on fostering innovation and economic growth.

• "Technology Transfer Rules and Regulations in Latin America" 2013 LESI Annual Meeting, Rio de Janeiro, Brazil, April 2013 Discussed the regulatory landscape for technology transfer in Latin America, providing guidance on navigating legal and procedural hurdles

• "Patent Assessment and Valuation"

2012 Industrial Property and Commercialization Seminar, Universidad Autónoma Metropolitana, Mexico City, November 2012 Presented methodologies for assessing and valuing patents, emphasizing their importance in commercialization strategies

• "Preparing and Prosecuting Software and Computer-Related Inventions in Mexico"

2012 AIPLA Annual Meeting, Washington, DC, October 2012 Shared best practices for drafting and prosecuting software and computer-related patent applications in Mexico, highlighting key considerations and common pitfalls

Professional Publications and Articles

• Contributing Editor, American Intellectual Property Law Association

(AIPLA) Patent Law Handbook

Section on Computer-Related Inventions for MEXICO

• "Energy Reform Promises Tech Transfer and Patent Boom" Managing Intellectual Property Magazine, Americas IP Focus 2014, September 2014

Analyzed the impact of energy reforms on technology transfer and patent activity in Mexico, predicting a surge in innovation and IP filings.

• “Patent Office Issues Wave of Rejections”

Managing Intellectual Property Magazine, Briefings, April 2012 Reported on a significant increase in patent rejections, examining the underlying causes and implications for applicants.

• “The Death of Business Method”

Managing Intellectual Property Magazine, Briefings, December 2009 Discussed the decline in patentability of business methods, exploring the legal and practical ramifications.

• “Mexico: Deciphering Mexican Patent Prosecution” Managing Intellectual Property Magazine, Briefings, October 2007 Provided a detailed overview of the Mexican patent prosecution process, offering practical advice for navigating the system.

• “Mexico: Software-Implemented Inventions Guidelines Unveiled”

Managing Intellectual Property Magazine, Briefings, May 2006 Reviewed new internal MPTO guidelines for software-implemented inventions in Mexico, highlighting key changes and their impact on applicants.

• “Mexico: Business Methods and Software-Related Inventions” Managing Intellectual Property Magazine, Briefings, September 2005 Examined the treatment of business methods and software-related inventions under Mexican patent law, providing strategic insights for applicants.

• “Accessing Genetic Resources”

Managing Intellectual Property Magazine, Life Sciences Focus, March 2005

Explored the legal and practical challenges of accessing genetic resources in Mexico, offering guidance on IP and regulatory compliance and best practices.

References Upon Request

• Monte Falcoff, Adjunct Law Professor, Michigan State University College of Law and Principal, Harness Dickey Pierce Troy, Michigan (*********@***.***)

• Jim Banoswki, Former Director, International Patents, Microsoft Corporation, and now General Counsel at AmpThink

Dallas, Texas (***.********@*****.***)

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