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 IP Australia Site
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Regional Offices
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Patents Online - Intellectual Property Manager (IPM)
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PROFILE
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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:
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· Service orientation and delivery
· Analysis, problem-solving and judgement
· Strategic planning
· Intellectual Property portfolio management expertise
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· Quality and results orientation
· Personal effectiveness and flexibility
· Communication and motivation
· Team player who values individual difference and
diversity
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EMPLOYMENT
HYSTORY
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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)
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EXPERIENCE
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NewSouth Innovations Pty Limited (NSi)/University of
NSW (UNSW)
Sydney, Australia
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05/2007 – 03/2013
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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:
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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;
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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;
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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;
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developed written implementation
policies or standard corporate operating procedures that conform to
University policies and that align IP work across DVC(R) units priorities;
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extensive experience with
domestic and cross-border IP licensing and technology transfer agreements
including dealing with lawyers and patent attorneys in multiple
jurisdictions;
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prepared and managed execution
of hundreds of legal foundation documents such as deed of assignment,
inter-institutional agreements, and royalties and revenue share arrangements;
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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.
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Research & Innovation Office (RIO)/University of
Technology Sydney (UTS)
Sydney, Australia
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04/2006 – 05/2007
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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:
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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;
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made decisions with successful
outcome in securing UTS corporate Trade Mark registration for its full name;
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developed in-house IP
user-friendly database, procedures and training program for its
implementation and use;
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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.
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Aristocrat Technologies Australia Pty Ltd
Sydney, Australia
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01/2003 – 03/2006
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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;
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provided target-forecast
reports and prepared proposals for short and long term IP budget allocation
and approval;
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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;
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managed regular workshops for
the corporate IP Portfolio review, valuation and analysis, business strategic
categorisation, maintenance cost optimisation, risk control and
competitiveness scale- scoring;
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probity auditing and advisory
services in respect of analysis and valuation of joint venture proposals in
gaming industry;
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insight knowledge on the
regulatory aspects of the liquor and gaming industry;
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pioneering one of the first ever
registered sound and shape trade marks in Australia (a winning jackpot song
and triangle-shape game machine button).
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Unisearch Limited (UNSW)
Sydney, Australia
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08/2000 – 12/2002
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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:
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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;
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initiated and implemented
corporate compliance procedures with respect to Contracts and IP Portfolio
management and administration;
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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;
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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).
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Patents Online Pty Ltd
Sydney, Australia
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1998 – 2000
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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:
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developed proven
entrepreneurial controlled risk-taker skills;
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established project/work plans
with clear timeframe and actions on given budget;
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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;
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planned, designed, and
implemented an effective online service, web based customer service network;
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strengths including excellent
time management, interpersonal and organisational skills;
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experience in problem solving,
working autonomously and multitask;
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good judgment when dealing
with sensitive or confidential matters;
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conducted business and competitive
intelligence research and analysis.
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Administrative Service Officer
Sydney, Australia
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1994 – 1997
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IP Australia (former AIPO)
Reporting to State Office
Manager, provided customer service in the State Office public library.
Key accountabilities include:
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established effective
engagement and consultation mechanisms with unrepresented customers;
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provided means for
consultation, discussion and information exchange on IP matters that relate
to industry and business;
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engaged and consulted widely
with IP Australia's Patent and Trade Mark Examiners on their issued reports
on pending applications in the prosecution phase;
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monitoring critical deadlines,
maintaining renewal IP portfolio including scheduling due dates and payment
fees
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developed high level customer service
by analysis of clients’ needs in order to attend their queries and meet their
expectations.
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The National Coal Division
Bucharest, Romania
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1989 – 1993
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Senior Consulting Engineer
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Campulung Muscel Colliery
Campulung Muscel, Romania
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1985 – 1988
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Mine Engineer
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EDUCATION
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The University of Mines
Petrosani, Romania
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1980 – 1985
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Bachelor of Engineering - Mines
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Academy of Economics, Science and Technology, CEPECA
Bucharest, Romania
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1988 – 1989
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Certificate in Intellectual Property Management and
Administration
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Other Professional Development and
Training
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The University of Sydney
Sydney, Australia
Australian Legal Institutions and Contract Law
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1998
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Mission Australia - NEIS Course
Fairfield, Australia
Small Business Management and Administration
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1998
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TAFE Meadowbank College
Meadowbank, Australia
Information Technology (Client Support)
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2000
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University of Technology Sydney
Sydney, Australia
Master of Intellectual Property (One year study -
Patent and Trade Mark Law)
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2001
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PROFESSIONAL
MEMBERSHIP
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Member of the Licensing Executive Society (LESANZ AU
& NZ) and International
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REFERENCES
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References made available on request
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Some useful links:
Site Map
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