resume 07202016

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Daniel P. Morris Day time: 914-766-0093; Cell: 914-522-8081 Email: [email protected] EDUCATION J.D. Pace University School of Law Honors: Dean's List, Ranking Scholar Ph.D. Physics - The City University of New York M.Phil. Physics - The City University of New York M.A. Physics - B.S. Physics/Chemistry/Engineering Cum Laude -The City College of The City University of N.Y. PROFESSIONAL LICENSES Admitted – N. Y .S. Bar; U. S. Patent and Trademark Office, Court of Appeals for the Federal Circuit EMPLOYMENT INTERNATIONAL BUSINESS MACHINES, CORP. IBM Counsel Legal Department T. J. Watson Research Center IP Counsel to VP Mobile Solutions and Mathematical Science, and VP Science & Technology. I am responsible for all IP matters for these groups. Manage the development, acquisition, and licensing of intellectual property assets. Specialize in Patent, Trademark and Copyright Law. Current primary areas of focus: (1) Assisting inventors in identifying inventions in their work; (2) IP education for technical personnel; (3) Promoting high volume generation of invention disclosures; (3) Identify inventors for recognition; (4) Evaluation of inventions with inventors, technical experts and management to decide if a patent application should be filed; (5) Personally file and prosecute patent applications for inventions and manage outside counsel on a large number of aplications; (6) Conduct interference, reexamination and reissue proceeding in the U. S. Patent Office. (7) Licensing of technology and joint development agreements to generate financial return on research investment; (8) Negotiate spin-off formation, joint venture formation, joint development agreements, equity agreement, technology and patent licensing agreements, assignments, government contracts, M & A, advertising services agreements and sales contracts etc.; (9) Lead team of technical and legal experts to analyze competitive products for patent infringement; (10) Asserting infringement against third party patent infringers; (11) Patent infringement and validity opinions, to defend against third party assertions of infringement; (12) Patent licensing; (13) Trademark, copyright and trade secret opinions and licensing; (14) Manage worldwide patent portfolio; (15) Instruct junior attorneys; (16) Responsible for a broad subject matter of technology, including: software, e-business, business methods, services, mathematical sciences, social media, financial transactions, fraud detections, market forecasting, communications, computer architecture, internet architecture and operation, virtual machines, front of screen, systems biology, functional genomics, chemistry, chemical engineering, bioinformatics, optics, optical tools, circuits, semiconductors, material science, superconductors, electronic packaging, mechanical apparatus, test equipment, metallurgy, multilevel electronic structures; (17) Manage outside counsel in patent prosecution in the preceding fields. (18) Handle open source software matters; (19) Work on U.S. patent law legislative proposals, USPTO regulation modifications and amicus brief preparation to U.S. federal courts. (20) I have personally handled civil actions before the U.S. District Court for the SDNY, the U. S. 2 nd Circuit Court of Appeals and the N. Y. S. Supreme Court. IBM ENGINEER IBM East Fishkill New York Development Laboratory Semiconductor science and technology development; Computer modeling of semiconductor devices; Semiconductor device process development; Manufacturing and reliability engineering; Fourth IBM Invention Plateau. Inventor on 29 issued patents. PHYSICIST RESEARCH FOUNDATION OF THE CITY UNIVERSITY OF NEW YORK Designed and directed experimental solid state, chemical and fluids physics using lasers and optical techniques. HUNTER COLLEGE OF THE CITY UNIVERSITY OF NEW YORK Lecturer in the Department of Physics and Astronomy. Taught physics, astronomy and mathematics PROFESSIONAL ORGANIZATIONS American Intellectual Property Law Association, IPO, IIPS, ABA, American Physical Society

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Page 1: Resume 07202016

Daniel P. Morris Day time: 914-766-0093; Cell: 914-522-8081

Email: [email protected] EDUCATION J.D. Pace University School of Law Honors: Dean's List, Ranking Scholar Ph.D. Physics - The City University of New York M.Phil. Physics - The City University of New York M.A. Physics - B.S. Physics/Chemistry/Engineering Cum Laude -The City College of The City University of N.Y. PROFESSIONAL LICENSES Admitted – N. Y .S. Bar; U. S. Patent and Trademark Office, Court of Appeals for the Federal Circuit EMPLOYMENT INTERNATIONAL BUSINESS MACHINES, CORP. IBM Counsel Legal Department T. J. Watson Research Center IP Counsel to VP Mobile Solutions and Mathematical Science, and VP Science & Technology. I am responsible for all IP matters for these groups. Manage the development, acquisition, and licensing of intellectual property assets. Specialize in Patent, Trademark and Copyright Law. Current primary areas of focus: (1) Assisting inventors in identifying inventions in their work; (2) IP education for technical personnel; (3) Promoting high volume generation of invention disclosures; (3) Identify inventors for recognition; (4) Evaluation of inventions with inventors, technical experts and management to decide if a patent application should be filed; (5) Personally file and prosecute patent applications for inventions and manage outside counsel on a large number of aplications; (6) Conduct interference, reexamination and reissue proceeding in the U. S. Patent Office. (7) Licensing of technology and joint development agreements to generate financial return on research investment; (8) Negotiate spin-off formation, joint venture formation, joint development agreements, equity agreement, technology and patent licensing agreements, assignments, government contracts, M & A, advertising services agreements and sales contracts etc.; (9) Lead team of technical and legal experts to analyze competitive products for patent infringement; (10) Asserting infringement against third party patent infringers; (11) Patent infringement and validity opinions, to defend against third party assertions of infringement; (12) Patent licensing; (13) Trademark, copyright and trade secret opinions and licensing; (14) Manage worldwide patent portfolio; (15) Instruct junior attorneys; (16) Responsible for a broad subject matter of technology, including: software, e-business, business methods, services, mathematical sciences, social media, financial transactions, fraud detections, market forecasting, communications, computer architecture, internet architecture and operation, virtual machines, front of screen, systems biology, functional genomics, chemistry, chemical engineering, bioinformatics, optics, optical tools, circuits, semiconductors, material science, superconductors, electronic packaging, mechanical apparatus, test equipment, metallurgy, multilevel electronic structures; (17) Manage outside counsel in patent prosecution in the preceding fields. (18) Handle open source software matters; (19) Work on U.S. patent law legislative proposals, USPTO regulation modifications and amicus brief preparation to U.S. federal courts. (20) I have personally handled civil actions before the U.S. District Court for the SDNY, the U. S. 2nd Circuit Court of Appeals and the N. Y. S. Supreme Court. IBM ENGINEER IBM East Fishkill New York Development Laboratory Semiconductor science and technology development; Computer modeling of semiconductor devices; Semiconductor device process development; Manufacturing and reliability engineering; Fourth IBM Invention Plateau. Inventor on 29 issued patents. PHYSICIST RESEARCH FOUNDATION OF THE CITY UNIVERSITY OF NEW YORK Designed and directed experimental solid state, chemical and fluids physics using lasers and optical techniques. HUNTER COLLEGE OF THE CITY UNIVERSITY OF NEW YORK Lecturer in the Department of Physics and Astronomy. Taught physics, astronomy and mathematics PROFESSIONAL ORGANIZATIONS American Intellectual Property Law Association, IPO, IIPS, ABA, American Physical Society