Coulter C. Henry Jr.

404-***-**** Marietta, GA adzmjw@r.postjobfree.com linkedin.com/in/coulterhenry

Career Summary

•Senior Legal Counsel with 20+ years of experience and an advanced background in manufacturing, control systems, semiconductor, and cellular intellectual property matters, leveraging complex contract negotiation and legal contract management expertise to mitigate organizational risk, reduce costs, and drive multi-million dollar revenue increases

•Advanced legal professional with a vast range of experience, including in-house counsel, external counsel, USPTO, and licensing sales transactional drafting, assisting and directing organizational leaders on various critical enterprise initiatives

•Perform complex contract negotiations to purchase licensed/patented products, focusing on establishing an agreement that delivers the highest possible enterprise revenue benefit

•Oversaw the management of 2 paralegals and was responsible for all intellectual property matters, as well as technology and marketing matters, providing advice, legal counsel, and representation in the court of law

•Maintained responsibility for the $15M licensing revenue and focused on maximizing revenue, negotiating with 3rd parties in need of a license to AT&T technology, resulting in generating $200M in licensing revenue

•Functioned as the Senior Patent Strategist and served in the first patent agent role for the organization, standing up the program to support enterprise patents, supporting revenue growth

•Established an initiative focused on aligning enterprise resources, directly generating $400K+ in annual revenue for the firm

Professional Work Experience

Whirlpool Corporation, Secondment Position – Benton Harbor, MI

Patent Counsel 2022 – 2023

•Responsible for preparing, managing, and prosecuting patent applications in laundry arts, including the management of any interference, opposition, re-issue, reexamination, supplemental examination, and invalidation proceedings

•Oversee the management of the enterprise patent portfolio and draft opinions, analyzing patent assets that are in various stages of a patent’s lifecycle, ensuring alignment with enterprise goals and objectives

•Deliver counsel to various clients concerning corporate and intellectual property issues, including business and patent licensing agreements

•Perform complex contract negotiations to purchase licensed/patented products, focusing on establishing an agreement that delivers the highest possible enterprise revenue benefit

•Participate in the analysis of patentability opinions, utilizing expertise to deliver professional determination of the likelihood that an idea or invention will be granted a patent

•Develop instruction letters for foreign associates delivering a detailed response to International Patent Office Actions

•Classify patent portfolio and model asset value for the subsequent sale of patent assets, directly generating a 10% cost reduction for the enterprise

•Establish ongoing communication with the USPTO concerning enterprise patents, drafting amendments in response to align with the office’s actions

•Collaborate directly with the federal government on related projects, strategically negotiating to secure an agreement that is acceptable for both parties

•Partner with the patent coordinator to facilitate the filing of patent assets supporting both domestic and global transactions

•Perform deep dives to research and analyze 3rd party claims, utilizing the information to draft memoranda on design alternatives

•Facilitate high-level negotiations for CRADA agreements and technology acquisition agreements, as well as draft waivers for IP rights

•Leverage legal expertise to consult with executive leadership, providing advice to the corporation concerning legal litigation

Rheem Manufacturing Company – Atlanta, GA

Senior Counsel, Intellectual Property 2013 – 2021

•Oversaw the management of 2 paralegals and was responsible for all intellectual property matters, as well as technology and marketing matters, providing advice, legal counsel, and representation in the court of law

•Spearheaded the patent program, directed outside counsel, and established a plan for an enterprise-wide patent and trademark portfolio, supporting top organizational performance

•Consistently analyzed the patent portfolio for financial impact, ending agreements that were no longer beneficial to the organization and reducing costs by 15%

•Established and implemented an organizational data privacy program, drafting data privacy notices for the company website

•Secured cross-functional coordination and a foundation to support the patent program, achieving the internal adoption of strategic licensing initiatives, driving 10% growth of the patent portfolio YoY and increasing patent filings 2X in 2020

AT&T Intellectual Property – Atlanta, GA

Director of Patent Licensing and Sales 2008 – 2013

•Maintained responsibility for the $15M licensing revenue and focused on maximizing revenue, negotiating with 3rd parties in need of a license to AT&T technology, resulting in generating $200M in licensing revenue

•Oversaw the planning, strategizing, and licensing negotiations, including the development of all documentation for licensing agreements and claims charts for use in negotiation meetings

•Identified, engaged, and counseled various inventors concerning invention disclosures with benefits for future licensing efforts, collaborating with finance and business units to establish an accurate evaluation of assets with each target

•Recognized critical wireless revenue and generated assets for licensing, sales, assertion, and litigation support, assisting in driving organizational growth

Cingular Wireless, LLC – Atlanta, GA

Senior Patent Strategist 2002 – 2008

•Functioned as the Senior Patent Strategist and served in the first patent agent role for the organization, standing up the program to support enterprise patents, supporting revenue growth

•Focused on building and managing a patent portfolio, maintaining the budgets, allocating work to law firms, and reporting the quality of draft applications and office action responses to the Chief IP Counsel

•Oversaw the drafting and prosecution of US and foreign patent applications and focused work supporting telecommunications

•Developed and cultivated business relationships with inventors, promoting engagement to support inventions and future developments

Oliff & Berridge, PLC – Alexandria, VA

Patent Agent 2000 – 2002

•Directly responsible for preparing and prosecuting both US and foreign patent applications in electrical and mechanical arts for telecom and electronic clients, collaborating with inventors to establish optimal patent protection scope

•Delivered legal guidance and direction for clients concerning current and future pending patent applications, ensuring the optimum course of actions

•Performed detailed analyses on multiple patents and utilized the data to provide clients, mentors, and examiners with critical information during the provision of responses to office actions, infringement opinions, and appeal briefs

•Established an initiative focused on aligning enterprise resources, directly generating $400K+ annual revenue for the firm

Additional Experience

U.S. Patent and Trademark Office – Patent Examiner, Imagery and Printing

Marconi Tracor Systems Technologies – Radar Systems Engineer II

Education & Certifications/Licenses

John Marshall Law School, Atlanta, GA – J.D.

The Citadel, Charleston, SC – B.S., Electrical Engineering

Georgia Bar License 677456 U.S. Patent and Trademark Office Patent Bar License 51,121

Certified Patent Practitioner (CPP)

Certified Engineer in Training (SCLLR) 13727

Core Competencies

Patent Program Development

Intellectual Property

Compliance

Complex Contract Negotiation

Privacy Notices & Consent

Legal Advising

Legal Analysis

Case Management

Legal Contract Management

Cost Reductions

Global, Cross-Functional & Executive Collaboration

Legal Research & Analysis

Multi-Million-Dollar Revenue Increases

Program Management

Project Management

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