Technical Expertise & IP Experience

NewSouth Innovations Pty Limited (NSi) - University of NSW (UNSW), Sydney, NSW Intellectual Property Manager (IPM), May 2007 - Report directly to the General Counsel and assist with the maintenance of a comprehensive set of precedent documents relating to intellectual property due diligence, assignment and early stage commercialisation documentation; Review prospective and existing intellectual property agreements between NSi, UNSW, academic and research staff of UNSW, and potentially unrelated entities, and ensuring that appropriate documentation is completed to enable NSi freedom to operate with regard commercialisation of such intellectual property; Provide guidance and hands-on assistance to Business Development Managers in the conduct of due diligence related to ownership issues associated with intellectual property to be commercialised by NSi. This include assessments of the extent, if any, of third party encumbrances or interests in intellectual property notified to NSi; Undertake in-depth intellectual property investigative audits on existing intellectual property portfolios held by NSi and UNSW in order to determine and report on intellectual property ownership, encumbrances and interests, and risks associated with such intellectual property; Provide contracts management support to the Business Development team, utilising template documents to prepare and vet intellectual property assignment documentation to/from inventors and UNSW, where appropriate; Maintain up to date knowledge of UNSW Policies and Guidelines that impact on activities of NSi and ensure any prospective intellectual property arrangements between NSi, UNSW, academic and research staff of UNSW, and potentially unrelated entities, to be entered into are compliant with those policies; Liaise with General Managers Commercialisation, Business Development Managers, external IP management service providers (Bwise IP), inventors and researchers.   UTS Research & Innovation Office - University of Technology Sydney (UTS), Sydney, NSW Intellectual Property and Licensing Manager (IPLM), 2006 - Apr. 2007 Manage UTS's research IP and licences portfolio to ensure compliance to the requirements of the UTS's IP Policy and NSW Auditor General and other relevant bodies; Manage professional service firms such as of Patent Attorneys, legal advisors and consultants; Contribute to the efficiency of the Research & Innovation Office by maintaining complete procedural documentation, files and records, including computer databases such as Research Master of UTS licences and Intellectual Property portfolio by putting forward suggestions for continuous quality improvement in the Office's processes and activities; Undertake and contribute to projects at the direction of the Pro-Vice-Chancellor (Research) or the Executive Manager, Technology Transfer Team or the Director of the Research and Innovation Office; Ensure guidelines, legislation and policies are adhered, maintained, developed to ensure that financial procedures are set up and monitored so that University and funding agencies' requirements are observed; Work closely with the Finance Manager and the Financial Services Unit to establish a process for efficiently ensuring revenues are received and distributed.   Aristocrat Technologies Australia, Pty Ltd , Lane Cove, NSW Intellectual Property Officer (IPO), 2003 - 2006 [ASX Code: ALL] Manage corporate global IP portfolio and assist subsidiaries IP Professionals on a daily basis global IP activity whilst reporting directly to the Global General Counsel and Chief Technology Officer; Assist and work with R&D corporate teams, external gaming industry consultants and experts, attorneys and patent and trade mark offices on IP matters such as filing and prosecution (patents, trademarks, industrial designs), legal, marketing and sales departments, external IP Lawyers as needed; Conduct worldwide patent/trademark/design prior art/novelty searches; perform IP information analysis and produce executive summary reports; monitor competitor IP activities and organise monthly IP watching reports; Manage and supervise administration IP files, computer docketing database of IP activity due dates, and status information regarding issued patents/trademarks/designs and pending applications worldwide; Run regularly IP reports for tracking costs and budgets, and perform periodic in-house IP Portfolio audit reports; Identify, evaluate and support technology licensing and patent enforcement opportunities; Review administrative IP procedures, including IP policy and procedural changes; Manage IP Advisory Group's monthly meetings and co-ordinate IP Committee quarterly gathering sessions; Organise periodically patent and trademark workshops for corporate IP portfolio review, analysis and assessment.   NewSouth Innovations (former Unisearch Limited) - University of NSW (UNSW), Sydney, NSW Licensing Officer, 2000 - 2002 Work closely with UNSW's senior academics and students, engineers, scientists, and associate research teams in their activity to identify patentable or other like protectable IP assets whilst reporting directly to the Manager Contracts & IP and Director of Technology Commercialisation; Evaluate and assess UNSW's invention disclosures for patentability, then advise and instruct outside attorneys with the preparation, filing and prosecution of national and international patent applications; Assist and advise Business Development Managers monitoring existing IP licenses, distributing income and managing costs and consulting on research funding agreements; Manage and supervise administration corporate IP Portfolio, IP database and files, including all licensing forms, research and commercial agreements, project management and accounting ledgers; Create and maintain proprietary license and collaborative research agreement library database; Assist with the development of UNSW's IP Policy, corporate IP process and procedures, and marketing strategies. Work very closely with the Business Development Managers formulating an appropriate commercialisation pathway by identifying market opportunities for the existing and new technologies; Assist BDMs, Legal, Finance and other key stakeholders to attend briefing on new technologies, conduct market entry analysis, prepare written feasibility reports & business plans, identify potential partners/investors, develop funding strategies, prepare financial models and prepare investment proposals.   Patents Online Pty Ltd (former Platonic Hood Patents on Line Australia), Sydney, NSW Intellectual Property Consultant , 1998 - 2000 Monitor global technology trends, track competitors activities and strategies, assess corporate IP portfolios to advise clients/customers in achieving targeted commercial outcomes; Conduct prior art patent searches in a wide range of technologies, including technical information retrieval and writing patentability opinions/reports for individual and corporate clients or attorneys; Assist individual and corporate clients in all trademark matters (trademark search, registration, watching and maintenance services, infringement advice); Participate in public education local government's programs on regular basis appointments in training and counseling on Intellectual Property issues for Small Business.   IP Australia (former AIPO), Sydney, NSW Administrative Service Officer, 1994 - 1997 Perform public officer's duties with IP Australia Sydney State Office in its daily business and customer services; Assist in preparation of the operational budget plans, monitor actions undertaken and report on results achieved; Review administrative procedures and undertake complex projects, including client surveys on proposed policy and procedural changes.   The National Coal Division, Bucharest, Romania Senior Consulting Engineer, 1989 - 1993 Review lessee mine plans for land and coal exploitation and lease compliance before authorisation; Perform research property titles for potential acquisitions or when adverse claims on occurrence instances; Co-ordinate activity of Patent and Trade Mark as appointed for acting on behalf of Coal Division and its regional units; Assist and supervise with drafting, filing preparation and examination of new patent/trademark/design applications.   Campulung Muscel Colliery ,Campulung Muscel, Romania Mine Engineer, 1985 - 1988 Assist, supervise and co-ordinate all range of activities in the area of mining operations, strategic planning, evaluation of mines and resource projects, equipment selection, mine optimisation and other mining management and engineering services; Draw and grade control and troubleshooting the underground production operations; Act as corporate Patent and Trade Mark Agent with main responsibility for drafting, filing preparation and examination of patent, trademark and design applications.

Education

(2001) - University of Technology Sydney - Faculty of Law, AU Master of Intellectual Property (One year study) (2000) � TAFE Meadowbank College � Certificate IV, Meadowbank, AU Information Technology (Client Support) (1998) - Mission Australia - NEIS Course, Fairfield, AU Small Business Management and Administration (1998) - The University of Sydney, Sydney, AU One year study (Australian Legal Institutions and Contract Law) (1988 - 1989) - Academy of Economics, Science and Technology, RO - Certificate in Intellectual Property Management and Administration (1980 - 1985) - The University of Mines, Petrosani, RO Degree of Engineering

Computer Skills

Consultancy in the Intellectual Property database and electronic document management systems - commercial and/or in-house developed systems (e.g. InProma, Inprotech & CPA Memotech , FoundationIP, Navision, WebTMS, LEX IP Management, ResearchMaster, Business Information System(BIS), TRIM , Inteum , infoEd , TheovsIon, NatIonALI, uniTion, proTion etc.); Expertise handling Patent Text Data-Mining and IP Asset Management tools including Aurigin/Aureka, Delphion, M-CAM Doors ™ , VantagePoint, MapIT, PatBase, Global IP Estimator etc.; Proven skills on systems development complying with user needs and specifications (i.e. in-house console applications; Internet related projects - E-Commerce, Flash Multimedia Interactive Presentations); Advanced knowledge using and handling graphics applications; Proven experience in Databases design and development, maintenance, use and administration; Good command programming language and experience with: Java, Perl, C, C++, Pascal, FORTRAN etc. - general purpose languages; PHP & DBase III - application specific languages; HTML, CSS & XML - mark-up/formatting languages; Knowledge of all major operating systems: Windows 95/98/00/XP, Windows NT, DOS, IBM Mainframe; IT Customer Support & Help Desk skills (hardware and software installation; troubleshooting and upgrading; network administration).

Interests and activities

New technologies; computers; Internet design and development; crosswords.

Professional Affiliations

Member of The Licensing Executive Society (LESANZ AU & NZ) and International Member of Knowledge Commercialisation Australasia

References

Made available upon request

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