Patents Online - Intellectual Property Manager (IPM)

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Mr. Ion GLUGA
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Ion Gluga

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PROFILE

Experienced Intellectual Property (IP) professional with a cross-industry and operational business models combination of demonstrated technical knowledge, expertise and skills in IP management, statutory acts and legislation interpretation, licensing, technology transfer and business development. Accomplished paralegal with strong risk management assessment expertise and who possess outstanding practice in business auditing and legal ownership due diligence investigations, analytical research data reporting and use, commercial contracts management and administration. Recognised for successfully planning, organising, and completing projects in compliance with corporate and regulatory policies and procedures.

 

Competencies include:

 

 

·     Service orientation and delivery

·     Analysis, problem-solving and judgement

·     Strategic planning

·     Intellectual Property portfolio management expertise

 

·     Quality and results orientation

·     Personal effectiveness and flexibility

·     Communication and motivation

·     Team player who values individual difference and diversity

 

 

 

EMPLOYMENT HYSTORY

NewSouth Innovations Pty Limited (NSi)/University of NSW (UNSW) (5 years 11 months)

Research & Innovation Office (RIO)/University of Technology Sydney (UTS) (1 year)

Aristocrat Technologies Australia Pty Ltd (3 years 4 months)

Unisearch Limited (UNSW) (2 years 5 months)

Patents Online Pty Ltd (2 years)

IP Australia (3 years)

Other – Romania (7 years)

 

 

 

EXPERIENCE

NewSouth Innovations Pty Limited (NSi)/University of NSW (UNSW)

Sydney, Australia

05/2007 – 03/2013

 

 

Intellectual Property Manager

Reporting to the General Counsel and Chief Operating Officer, carried out the legal ownership due diligence assessments articulated by UNSW's IP Policy, its personnel contract of employment and students enrolment, including management and commercialisation of university IP. Provided executive summary reports on factual-findings during due diligence forensic and discovery investigations. Made resolution recommendations to the Technology Review Committee on complex IP due diligence issues and conflicts. Prepared and managed logistics associated with the legal foundation documents execution (researcher deeds, assignments, other specific IP title agreements).

Key accountabilities include:

·     liaison experience with internal and external stakeholders, steering committees and senior management to ensure compliance to the statutory acts and legislation, internal processes and procedures;

·     life cycle project experience covering roles such as commercial/business analyst, in-house functional patent and trade mark consultant service, business development manager, operations officer and general manager;

·     support to NSi and UNSW with mechanisms to enhance the process of developing IP and secure its transfer to the market without or limited risk associated with the legal ownership, IP Rights and title;

·     developed written implementation policies or standard corporate operating procedures that conform to University policies and that align IP work across DVC(R) units priorities;

·     extensive experience with domestic and cross-border IP licensing and technology transfer agreements including dealing with lawyers and patent attorneys in multiple jurisdictions;

·     prepared and managed execution of hundreds of legal foundation documents such as deed of assignment, inter-institutional agreements, and royalties and revenue share arrangements;

·     managed compliance due diligence routine tasks by conducting regular investigations and analysing research data related to listed companies under Corporations Act and ASX Listing Rules including continuous disclosure, director's duties, capital raising and restructurings, and company secretariat media releases;

·     interviewing key personnel expertise to document forensic investigations factual-findings prior to due diligence reports being issued;

·     consulting reviewer experience with corporate set of templates for new policy and procedures, legal IP ownership foundation documents, and due diligence assessor expertise of content development and production of such documents.

 

 

 

 

 

 

 

Research & Innovation Office (RIO)/University of Technology Sydney (UTS)

Sydney, Australia

04/2006 – 05/2007

 

Intellectual Property and Licensing Manager

Reporting to the Executive Manager of Technology Transfer Team and Director of the Research and Innovation Office, provided support in the management IP, identification, protection, development and commercialisation. Implemented processes to maximise value of IP and provide sustainable competitive advantage in the market place in a cost-effective manner.

Key accountabilities include:

·     provided expert advice on the University IP Policy, precedent, conflict of interest, best practice and resolutions on complex issues and disputes over IP ownership, title and like established IP rights;

·     made decisions with successful outcome in securing UTS corporate Trade Mark registration for its full name;

·     developed in-house IP user-friendly database, procedures and training program for its implementation and use;

·     provided IP advisory support with the execution and maintenance of commercial and licensing agreements, technical strategy including technology licensing and technology transfer;

·     managed large and complex set of internal and external resources to achieve key corporate goals for effectively managing university IP Portfolio;

·     organised and managed full tender process in requesting submission and presentation of interest, selecting, appointing and executing the service agreements with patent and trade mark attorney firms hired by university as external professional service providers.

 

 

 

 

 

Aristocrat Technologies Australia Pty Ltd

Sydney, Australia

01/2003 – 03/2006

 

Intellectual Property Officer

Reporting to the Global General Counsel, provided support in the management IP, identification, protection, development and commercialisation, in-take new invention disclosures from R&D. Managed extensive corporate trade marks portfolio including advising support on prosecution, opposition, revocation and cancellation proceedings, competitors watching and discovery evidence required with the ongoing litigation cases. Assisted Legal Team' Lawyers with the multiple expert witnesses statutory declarations preparation on a range of issues (IP enforcement and litigation) for numerous interim court hearings.

Key accountabilities include:

·     accredited efficient management of administrative work, including timely information dissemination to the corporate global business and branches;

·     provided target-forecast reports and prepared proposals for short and long term IP budget allocation and approval;

·     determined costly outsourced operational services (IP watching, maintenance and annuities) and managed considerable cash flow savings by redefining the process to use the already existing available in-house resources;

·     managed regular workshops for the corporate IP Portfolio review, valuation and analysis, business strategic categorisation, maintenance cost optimisation, risk control and competitiveness scale- scoring;

·     probity auditing and advisory services in respect of analysis and valuation of joint venture proposals in gaming industry;

·     insight knowledge on the regulatory aspects of the liquor and gaming industry;

·      pioneering one of the first ever registered sound and shape trade marks in Australia (a winning jackpot song and triangle-shape game machine button).

 

 

 

 

 

 

 

 

 

Unisearch Limited (UNSW)

Sydney, Australia

08/2000 – 12/2002

 

Licensing Officer

Reporting to General Manager Commercialisation and Contracts Manager, supported IP management and evaluations related to commercial development, new opportunity assessment and technology licensing. Established and maintained a customised in-house IP database including records of all contracts and related milestones to reflect current status and assist executive managers with necessary information data in the day to day decision making and for corporate business operations. Managed contracts from business risk and compliance perspective and to ensure that all commercial requirements of the contracts are satisfied.

Key accountabilities include:

·     liaised with external Patent, Trade Mark Attorneys and Law Firms in order to deliver a cost effective IP professional service, competitor analysis, valuations and clear legal opinions;

·     initiated and implemented corporate compliance procedures with respect to Contracts and IP Portfolio management and administration;

·     managed the contract review process for the in-house executives and project managers from initial discussions, first drafts, amendments from internal clients, negotiation with third parties, internal sign off and post-execution queries;

·      provided advice and support on regulatory and compliance matters including UNSW's IP Policy to the in campus community (academics and students, researchers and associated scientists).

 

 

 

 

 

 

 

Patents Online Pty Ltd

Sydney, Australia

1998 – 2000

 

Intellectual Property Consultant

Freelance contractor services. Conducted all types of patent, trade mark and industrial design searchers (prior art, state of art, novelty, validity, infringement) in order to produce landscape mapping versus finite products or services ready for promotion or already in the markets to clients' existing IP portfolio to identify potential patent infringements or determine strategic business strategy.

Key accountabilities include:

·     developed proven entrepreneurial controlled risk-taker skills;

·     established project/work plans with clear timeframe and actions on given budget;

·     gained ground IP expertise and consulting experience to achieve intended business results in dealing with IP while providing IP related service and assistance to individual IP creators, small and medium businesses;

·     planned, designed, and implemented an effective online service, web based customer service network;

·     strengths including excellent time management, interpersonal and organisational skills;

·     experience in problem solving, working autonomously and multitask;

·     good judgment when dealing with sensitive or confidential matters;

·      conducted business and competitive intelligence research and analysis.

 

 

 

 

 

 

 

Administrative Service Officer

Sydney, Australia

1994 – 1997

 

IP Australia (former AIPO)

Reporting to State Office Manager, provided customer service in the State Office public library.

Key accountabilities include:

·     established effective engagement and consultation mechanisms with unrepresented customers;

·     provided means for consultation, discussion and information exchange on IP matters that relate to industry and business;

·     engaged and consulted widely with IP Australia's Patent and Trade Mark Examiners on their issued reports on pending applications in the prosecution phase;

·     monitoring critical deadlines, maintaining renewal IP portfolio including scheduling due dates and payment fees

·      developed high level customer service by analysis of clients’ needs in order to attend their queries and meet their expectations.

 

 

 

 

 

 

 

 

The National Coal Division

Bucharest, Romania

1989 – 1993

 

Senior Consulting Engineer

 

 

 

 

 

 

 

Campulung Muscel Colliery

Campulung Muscel, Romania

1985 – 1988

 

Mine Engineer

 

 

 

 

 

EDUCATION

The University of Mines

Petrosani, Romania

1980 – 1985

 

 

Bachelor of Engineering - Mines

 

 

 

 

 

Academy of Economics, Science and Technology, CEPECA

Bucharest, Romania

1988 – 1989

 

Certificate in Intellectual Property Management and Administration

 

 

 

 

 

Other Professional Development and Training

 

 

The University of Sydney

Sydney, Australia

Australian Legal Institutions and Contract Law

1998

 

 

 

 

Mission Australia - NEIS Course

Fairfield, Australia

Small Business Management and Administration

 

1998

 

 

 

 

TAFE Meadowbank College

Meadowbank, Australia

Information Technology (Client Support)

 

2000

 

University of Technology Sydney

Sydney, Australia

Master of Intellectual Property (One year study - Patent and Trade Mark Law)

 

 

 

2001

 

 

 

PROFESSIONAL MEMBERSHIP

 

 

 

 

Member of the Licensing Executive Society (LESANZ AU & NZ) and International

 

 

 

 

REFERENCES

 

 

 

 

References made available on request

 

 

 

 

 



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