Resume
John
de la Rosa,
Esq.
375 Upper
Mountain
Ave
Montclair,
NJ 07043
www.delarosalaw.com
john@delarosalaw.com
(973)
233-0420
SKILLS
Excellent
verbal and
written
communication,
interpersonal
and
computer
skills
Strong
analytic
legal,
scientific
and
organization
skills
15+ Years
of
combined
in-house
and law
firm
experience
in IP law
Litigation
experience
Patent Bar
License
EXPERIENCE
Law
Offices of
John De La
Rosa,
1995 -
Present
Represent
a wide
range of
clients in
the
acquisition,
protection
and
litigation
of their
intellectual
property
rights,
including
patents,
trademarks,
copyrights,
and trade
secrets in
such areas
as
E-commerce,
physics,
electrical
engineering,
mechanical
engineering
and
chemistry:
·
Draft
patent
applications,
including
suggesting
modifications
to broaden
the scope
of the
inventions
·
Assess and
develop
intellectual
property
portfolio
to
facilitate
timely
launch of
products
·
Advise
clients
and
oversea
agents on
applications
filed
abroad
·
Ensure
applications
and
renewal
deadlines
are met
·
Negotiate
license
agreements
&
technology
transfer,
including
advice on
infringement
and
enforcement
rights
·
File
Trademark
&
Copyright
registrations
in
implementing
IP
strategies
to protect
client’s
products
·
Conduct
freedom to
operate
studies
relevant
to
clients’
core
business
·
Handle
patent
infringement
lawsuit,
including
arbitration,
from
initial
complaint
to trial
·
Develop
company IP
policies &
procedures
Pennie &
Edmonds -
New York,
NY 1991
- 1995
Involved
in the
licensing
and
litigation
of
intellectual
property
matters by
performing
the
following:
Reviewing
documents
to
identify
relevant
information
affecting
key legal
issues;
identifying
and
researching
legal
issues in
drafting
pre-trial
motions;
preparing
witnesses
for taking
deposition
or
testifying
at trial;
studying
and
evaluating
products
and
patents in
drafting
infringement
&
invalidity
opinions;
and
performing
prior art
searches.
Notable Litigation Experience
Worked on Teradyne v. Hewlett-Packard, Inc., representing HP in a patent infringement case involving testing
of integrated circuit designs.
Worked on appeal to the Federal Circuit in Litton v. Honeywell representing Litton after erroneous JMOL and
summary judgment.
AT&T Bell Laboratories - Princeton & Holmdel, NJ 1980 - 1991
Member of Patent and Legal Staff 1989 - 1991
Member of Research Staff 1980- 1989
As member of legal staff, responsible for the various phases of patent work for several of Bell Laboratories'
basic research departments in photonics and device physics. As member of research staff, developed laser
based systems for inspecting and identifying defects within and on semiconductor wafers used in manufacturing
photonic devices, such as lasers.
PUBLICATIONS De La Rosa et al., "Wafer Inspection With a Laser Scanning Microscope", AT&T Technical Journal, vol. 65,
No. 1, Jan./Feb. 1986, pp. 68-77, Short Hills, New Jersey, US.
EDUCATION Juris Doctor - June, 1991
Rutgers School of Law - Newark, New Jersey While Concurrently Employed by AT&T Bell Laboratories
Master of Science (Electrical Engineering) - 1985 Columbia University - New York, N.Y.
While Concurrently Employed by AT&T Bell Laboratories
Master of Science (Optics) - 1981 University of Rochester - Institute of Optics -Rochester, N.Y.
AT&T Bell Laboratories Fellowship Grant Recipient
Bachelor of Electrical Engineering with Honor - 1980 Stevens Institute of Technology - Hoboken, New Jersey
BAR Admitted to the New York & New Jersey Bars, U.S. District Courts, Eastern and Southern Districts of New York,
District of NJ and the U.S. Court of Appeals for the Federal Circuit.
LICENSE Registered to practice before the PTO (Reg. No. 34,317).
HOBBIES, Enjoy tennis, skiing, and running
INTERESTS