Mechanical Engineering Office

Yvonne Michele Horton

*** ******* **** ***** #***** *******@*****.***

Greenville, SC 29616 410-***-****

Objective To obtain a rewarding yet challenging career that would exercise my knowledge and expertise in law as it applies specifically to technology, research, consulting, patents and intellectual property.

Certifications Registered Patent Agent

Experience

February 2012 – Present (Contractual)

General Electric – Greenville, SC

Patent Agent – Specializing in the competitive technical assessments and analysis of the gas turbine engine portfolio.

• Monitors intellectual property of competitive technologies.

• Contributes to developing and implementing strategies for protecting and expanding the intellectual property portfolio.

• Develops strategic landscape analysis of competitive companies and technologies associated therewith and provides

recommendations with regards to future intellectual property ventures.

• Provides product clearance assessments by conducting patent searches and analyzing impacts on proposed designs.

• Provides technical and intellectual property support to engineers regarding products under development.

• Prepares value chain analyses outlining recommendations for portfolio strengthening.

• Provides intellectual property support in the form of recommendations for United States Patent and Trademark Office office

action responses.

Accomplishments:

• Created a value chain analyses detailing recommendations for a potential cost savings of $175,000 related to maintenance

and annuity fees for a specific patent portfolio.

October 2008 – April 2011

AngioDynamics, Incorporated – Queensbury, NY

Patent Agent – specialized in maintaining, protecting and developing the intellectual property portfolio for the Peripheral Vascular Devices Business Unit.

• Monitored intellectual property of competitive technologies.

• Developed and implemented strategies for expanding the company’s intellectual property portfolio.

• Monitored costs associated with intellectual property portfolio and implements cost improvement processes.

• Provided product clearance assessments by conducting patent searches and analyzing impacts on proposed designs.

• Developed strategic landscape analysis of competitive companies and technologies associated therewith and provided

recommendations with regards to future intellectual property ventures.

• Provided technical and intellectual property support to product development team regarding products under development.

• Worked directly with research engineers and outside inventors to develop novel and innovative ideas.

• Worked directly with research engineers and outside inventors to draft, finalize and file patent applications with the United

States Patent and Trademark Office.

• Led the prosecution of US and foreign pending utility, design patent and trademark applications including timely responding

to office actions, drafting amendments, and filing related applications as needed.

• Regulated trademarks and issued cease and desist letter where needed.

• Managed and provided intellectual property support with regards to current and potential license agreements.

• Prepared written monthly reports on business sector intellectual property activity including monitoring patent portfolio

counts.

Accomplishments:

• Created a cost savings in excess of $72,000.00 in one quarter related to purging unwanted IP inherited from an acquisition.

• Created a yearly income of $350,000.00 related to licensing IP.

July 2007 – September 2008

Landon IP – Alexandria, VA

Patent Analyst – specialized in the strategic development and implementation of International Patent Applications through the Patent Cooperation Treaty.

• Analyzed International Patent applications according to PCT and USPTO guidelines and standards

• Maintained proficiency with commercial patent databases and other proprietary databases that disclose technical

publications

• Performed proficient and strategic searches as they pertain to patentability (novelty), validity, freedom-to-operate and

infringement rights

• Communicated effectively with customers in determining the scope of searches by preparing informative reports that clarify

and summarize search results

• Conducted long-term patent landscape studies to identify trends in a technology field, deliver competitive intelligence and

identify potential research and licensing opportunities

1994 – June 2007 (13 year tenure)

The United States Patent and Trademark Office – Alexandria, VA

Senior Patent Examiner – specialized in the professional, technological, and legal examination of US and International Patent applications in civil and mechanical engineering, more specifically related to static structures; whereby, the use of scientific theory and engineering techniques along with the application of procedural and substantive general law that is derived from the principles of statutory and case law are applied to individual cases to grant distinguishable rights to a party in the form of a valid United States Patent.

• Analyzed International and US patent applications under the PCT and USPTO guidelines and standards

• Performed proficient and strategic searches using USPTO derived search engines, databases, the internet, and other technical

publications or written disclosures

• Prepared technically written communications summarizing deficiencies in International and US patent applications regarding

matters of form and patentability

• Assisted in the formulation of claims and other patent subject matter to ensure appropriate patentability over prior art

• Conducted telephonic and personal interviews to enhance prosecution and execution of patent applications

• Trained and prepared junior examiners with their duties as Patent Examiners

Education Masters Program for Mechanical Engineering – No Degree

Binghamton University, Binghamton, New York

Bachelor of Science for Civil Engineering – 1992

Morgan State University, Baltimore, Maryland

Career Training Patent Law Institute

•Advanced Patent Prosecution

•Re-examination Strategies

•Understanding IP Licensing

•Best Practices for Claim Drafting & Markman Hearings

•Prior Art & Obviousness “Trends in Section 102 & 103”

•IP Law Institute “IP Updates, In-House Thinking & IP Ethics”

Seminars/Workshops

•Women in Intellectual Property

•Tactics for Securing European Patent Rights

•Licensing & IP Issues that Arise in Mergers & Acquisitions

•Overcoming the IP Due Diligence Dilemma

•Implementing a Low Cost IP Infrastructure

•Enforcing IP in China

USPTO Juris Doctor Certificate Program/Patent Academy

•Patent Law •Contract Law •PCT Chapter I & II

•Evidence law •Constitutional Law •Technical Writing

Technical Delphion, Innography, Pacer, Aureka, Nerak, Foundation IP, Patbase,

Proficiencies Micro-Patent, Google Patent, Dialogue Pro, IP.com, EAST, WEST, OACS, Adobe Acrobat 9 Pro, Microsoft – Xcel, XP,

Word, Office, PowerPoint, Publisher and Visio

Memberships American Intellectual Property Association

The National Intellectual Property and Law Association

The Licensing Executives Society

The United States Patent and Trademark Office Society

The American Society of Civil Engineers

Alpha Kappa Alpha Sorority, Incorporated

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