Herndon Intellectual Property Consulting : Drew Herndon

Drew Herndon

Drew R. Herndon
CEO and principal consultant

EDUCATION

Texas A&M University, College Station, TX and Earlham College, Richmond, IN: Significant course work in English, Business and Accounting.

St. Stephens Episcopal School, Austin, TX: High School Diploma.

HONORS

Certified Process Excellence Green Belt (Johnson & Johnson)
U.S. Army Commendation Medal (Two Oak Leaf Clusters)
Army Achievement Medal
Test & Evaluation Command (TECOM) Professional Award
Good Conduct Medal (Second Award)

EXPERIENCE

Herndon IP Consulting, LLC, Austin, Texas
Intellectual Property Management Consulting
September 2006 – present

CEO/President. Formed a company to provide consulting services in all aspects of intellectual property management, including law firm management, docket systems selection, implementation and management, personnel management and recruiting, file storage and management, document management systems and practice, and financial, time keeping and billing tools, directed toward all types of law firms (primarily those dealing with intellectual property prosecution) as well as in-house corporate intellectual property departments and legal departments. Consulting services also include project work on all types of IP prosecution and case management, including assistance with large scale client case intake or transfer, docket audits, file/records audits, manual creation, assistance with docketing, billing and time entry, and other activities requiring short term support.

Patrix AB, Gothenburg, Sweden
Intellectual Property Helpware
April 2006 – September 2007

Project Leader. Recruited to established a remote office in Austin, Texas to help run the U.S. operation of a Swedish company making and selling intellectual property management software (case management, docketing, document management, billing and financial management, etc.). Responsible for marketing and client development through conference and association meeting attendance (ALA, INTA, AIPLA, etc.), sales, installation and implementation at client sites, onsite training of client staff, client support, software development, bug resolution and application testing, coordinating application development with the U.S. Patent and Trademark Office for e-filing and auto-populating form interfaces, and assisting with tracking country law changes in the U.S. and foreign countries to update software. Work involves extensive travel in U.S. and abroad, frequent meetings with law firm partners and corporate executives, and independent work from a remote office.

Bozicevic, Field & Francis LLP, East Palo Alto, California
Intellectual Property Law Firm
April 2005 – April 2006

Executive Director. Responsible for all aspects of managing daily operations and business for a small intellectual property law firm (8 attorneys, 4 patent agents, 15 staff), including: business management, development and marketing, office and personnel management, human resources administration, facilities management, and internal financial analysis and planning. Business management, development and marketing responsibilities include: drafting attorney bios for firm brochure, website and national trade listings (Martindale-Hubbell); revising website design and content; negotiating print advertising with various publications and journals and drafting content; assisting partners in developing and implementing marketing strategies and developing strategic plan for future growth; and working with partners to establish an East Coast office and market the addition. Office and personnel management duties include: new employee orientation and training; conflict resolution; attorney and staff development, education and training; community outreach and charitable work; coordinating equipment procurement and maintenance; overseeing IT department, management and budget; and coordinating supplies and general office needs. Human resources duties include: locating, screening, recruiting, hiring and firing of attorneys, agents and staff; career counseling; developing and maintaining policies and procedures; benefits and payroll administration; conducting employee evaluations and reviews; working with partners to decide salary levels, increases and bonus payments; and review and revision of Employee Manual. Facilities role consists of: attending to Federal and State legal requirements regarding non-discrimination, equal employment, workplace safety, pay, benefits and work schedule requirements, etc.; coordinating vendors; assisting with space utilization planning and office growth logistics; interior decorating; lease negotiations; furniture and equipment evaluation and procurement; rental payments; working with property management on facilities issues; and planning and establishing new office in Virginia. Financial review and planning involve: reviewing firm financial reports; monthly analysis of attorney billable hour reports, spreadsheets for client accounting, and reports of individual attorney accounts receivable; and evaluation of firm profitability and overall budget for determination of salary and raise policies and available funding for bonuses.

Wilson Sonsini Goodrich & Rosati, Palo Alto, California
General Practice Law firm
October 2003 – April 2005

Patent Administrator. Work directly for three partners in the Patents and Innovation Counseling Group, responsible for all aspects of development and daily operation of a rapidly growing patent prosecution practice, including scouting, interviewing and hiring paralegals and secretaries and training new staff; developing and implementing group policies and procedures; developing and implementing new productivity tools, systems and software; supervising and supporting four paralegals, docketing and records clerks, and six secretaries; and serving as liaison between the patent group and higher level firm management. Coordinated growth of patent prosecution group from approximately five attorneys and related staff to a level of fourteen attorneys and related staff, as well as establishing regional offices in San Diego (now approximately 26 attorneys and staff) and Seattle (one attorney and one secretary) and overseeing personnel, training, records, docketing and other logistical and operational issues on a daily basis. Additional duties included serving as a senior paralegal involved in all aspects of patent prosecution.

LifeScan, Inc., Milpitas, California
Diabetes monitoring and research (a Johnson & Johnson company)
November 2001 – October 2003

Senior Paralegal/Patent Administrator: Work directly for Vice President, Legal, responsible for overseeing and coordinating U.S. and foreign patent prosecution with outside counsel, including dealing on a daily basis with up to eight law firms; coordinating and overseeing foreign filing of LifeScan patent applications, including maintaining docket of foreign filing due dates for all LifeScan cases, determining in which countries to foreign file, and issuing instructions for filing to J&J and outside counsel. Coordinate foreign prosecution; draft correspondence responding to Office Actions; communicate with foreign associates regarding all matters related to filing and prosecution of applications. Conduct all aspects of U.S. patent prosecution, including filing applications, drafting Petitions and responding to Notices, filing amendments and IDSs. Respond to daily docket notices from J&J; provide documents and instructions to J&J as needed to facilitate U.S. and foreign patent filing and prosecution, including payment of annuities and maintenance fees. Supervise integration of IP from corporate acquisitions, including coordinating file and responsibility transfer either in-house or to new outside counsel; liaise with acquired company, law firms and J&J corporate headquarters. Establish and maintain a master file list for all LifeScan owned patents and applications; review monthly status reports from outside counsel and provide monthly and quarterly reports on LifeScan IP to Patent Estate and Johnson & Johnson (J&J). Track U.S. Patent Office (PTO) rule and policy changes and disseminate to Patent Group. Maintain files and database regarding patent Watches and Oppositions; maintain contact with watching agents; track deadlines for filing oppositions. Correspond with foreign agents and local outside counsel regarding invoice and billing issues and coordinate with J&J. Interview, hire, train and supervise three temporary employees serving as patent secretary. Attend and participate in weekly patent group/R&D meetings, providing input on portfolio particulars and management. Attended Process Excellence training; in the course of a seven month project, devised and implemented a foreign filing evaluation process resulting in $1.4 million cost avoidance in initial year for LifeScan.

OpenTV, Inc., Mountain View, California
Interactive television hardware and software
August 2001 – October 2001

Senior Intellectual Property Specialist: Responsible for overseeing and prosecuting a large trademark portfolio, including approximately 40 marks filed in 80 countries. Prosecution duties include searching new marks, preparing and filing new trademark applications in the U.S. Patent and Trademark Office, responding to Office Actions and communicating with Examiners, and corresponding with foreign associates regarding foreign trademark prosecution. Additional responsibilities include assisting with U.S. and foreign patent prosecution and administration, and assisting with coordinating and directing the company intellectual property portfolio.

Wilson, Sonsini, Goodrich & Rosati, Palo Alto, California
General Practice Law Firm
June 1997 – July 2001

Senior Paralegal: Responsible for all aspects of patent prosecution; primarily involved in filing new applications, preparing continuation and divisional applications, drafting preliminary amendments, drafting provisional applications and compiling disclosures for provisional filings, meeting with clients to discuss provisional filing details and applications; drafting patent claims, preparing Information Disclosure Statements (IDSs), Certificates of Correction, etc., corresponding with U. S. Patent and Trademark Office (USPTO) regarding status of applications, drafting petitions to USPTO, responding to Notices, dealing with prosecution details with Examiners and branches, legal research for patent reviews, etc., reviewing patents and prior art materials for litigation cases, using CPI patent docketing system and maintaining personal docket for IDS and continuation application filings. Administrative responsibilities include attending to daily operation of patent prosecution department, supervising two paralegals, interviewing new secretaries and case assistants and consulting on hiring, training new secretaries and case assistants in patent practice and procedures, preparing training materials and conducting training seminars for attorneys and staff, attending to personnel and staffing issues, coordinating standardization of forms templates, assisting with docketing procedures and policies, maintaining information resources published by or about USPTO and disseminating information in weekly and monthly USPTO publications. Currently training in practice areas of securities litigation and technology licensing, with emphasis on contracts, licensing, copyright matters, and international software and internet use license matters.

Lowe, Price, LeBlanc & Becker (now part of McDermott, Will & Emery), San Jose, California.
Patent Law Firm
March 1994 – June 1997

Legal Secretary: Selected to move to California to open branch office with two partners and two associate attorneys specializing in the Electrical Engineering and Computer Software fields. Responsible for all aspects of daily office operation, processing patent applications from the initial invention disclosure through patent issue including: initial application to U.S. Patent and Trademark Office (USPTO), amendments, declarations, continuations, foreign filings, use of SmartDrawTM computer program to draw flow charts and computer software and hardware diagrams; assisting with technology licensing and litigation projects (primarily document production and review) for partner; maintaining accounting records and attorney time records, ensuring correct fees are paid to USPTO and then billed to client, performing all aspects of invoicing client using Elite Legal Billing System. Maintain two attorneys’ daily docket books, communicate with USPTO on application prosecution. Responsible for training newly hired administrative personnel in office and USPTO procedures and in use of computer software applications. Additional duties include being Network System Administrator responsible for all aspects of maintaining hardware and software for a Novell 32 LAN with ten workstations.

Lowe, Price, LeBlanc & Becker, Alexandria, Virginia.

Legal Secretary: Responsible to two attorneys specializing in the Chemical and Biotechnology fields, processing patent applications from the initial invention disclosure through patent issue including: initial application to U.S. Patent and Trademark Office (USPTO), amendments, declarations, continuations, foreign filings, amino acid and DNA sequence listings using PatentIn software, drawing chemical formulas, etc.; preparing and filing Trademark and Service Mark applications, drafting responses to Official Actions in Trademark cases; maintaining over 100 active cases; ensuring correct fees are paid to USPTO and then billed to client. Maintain two attorneys’ daily docket books, communicate with USPTO on application prosecution. Work with partner in firm on short deadline preparation of pleadings, motions, affidavits, etc. in litigation cases.

Texas Transportation Institute (TTI), Texas A&M University System, College Station, Texas.
Largest university-based transportation research organization in the United States.
1989 – 1994

Administrative Secretary to Associate Director of TTI: Responsible for editing and producing technical reports, drafting technical memoranda, coordinating travel arrangements for senior staff, paying and tracking accounts payable, approving expenditures on 40 separate accounts; assisting with the planning and execution of various annual conferences (3,000 + participants annually). Worked closely with a major law firm tracking patent activities (discoveries, disclosures, applications, foreign filings, etc.), approving annuity payments, responding to requests for information and technical support, assisting Associate Director in negotiating license agreements on TTI patents and moving those agreements through TTI and the Chancellor’s office. Maintained sick and annual leave records for approximately 500 employees (including computer database and hard copy files), key control for 8 story office tower (including database with approximately 700 records), and personnel files for approximately 500 employees.

Scientific Inquiry, Inc., Bryan, Texas.
Engineering Consulting firm
1990 – 1994

Office Manager (Part time): Responsible for all aspects of day-to-day business, including drafting outgoing correspondence to law offices and corporate clients; editing technical reports, legal papers, etc.; maintaining financial records and accounting data; maintaining case files; paying company bills and taxes (including payroll taxes); invoicing clients and maintaining company checking, profit sharing and investment accounts.

United States Army
Several locations in the United States and Germany.
1983 – 1989

Sergeant: Worked directly for Lieutenant Colonel as Battalion legal clerk. Responsible for legal proceedings both for and against incoming basic trainees; preparing legal forms and correspondence for Judge Advocate General’s office; briefing Company, Battalion and Brigade commanders on legal options and ramifications; overseeing Congressional inquiry processing. Helped coordinate and schedule graduation exercises for Battalion (1,000 troops), and served as the parade driver for a Major General during troop reviews. Administrative supervisor for aviation R&D unit with direct supervision of five soldiers; coordinated all administrative functions of a 200 soldier unit; served as unit reenlistment officer; provided legal counsel to Company commander and served as liaison with host command in legal and administrative affairs. Served as liaison with higher command at Aberdeen Proving Ground on electronic data interfacing, including business travel to and from Maryland to meet with counterpart. Assisted in planning reviews for commanding general of TECOM, escorted general and staff officers on many occasions, and was the designated speaker at company changes of command, reviews, parades, award and promotion ceremonies. Served as squad leader in Basic Training responsible for 14 other trainees; Team NCO for 3d Infantry Division replacement detachment; infantry fire team and recon patrol member in Germany (selected for leadership training and early promotion to Sergeant). Honorable discharge, November 1989.

REFERENCES

Karl Bozicevic
Partner
Bozicevic, Field & Francis, LLP
1900 University Ave., Suite 200
East Palo Alto, California 94303
(650) 327-3400

James R. Shay
Partner
Shay Law Group, LLC
2755 Campus Drive, Suite 210
San Mateo, California 94403
(650) 212-1700

(Additional professional and personal references available upon request.)

Wed, July 23 2008