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Westchester Community College Paralegal Program FacultyTheresa A. O'Rourke
LEGAL EXPERIENCE: Westchester Community College, Valhalla, NY (SUNY) Summer/Fall 2001 Adjunct Professor – Intellectual Property Law – Paralegal class; topics included patents, copyrights, moral rights, trademarks, trade secrets, and right of privacy; Immigration Law –Paralegal class; topics include VISA, green card, citizenship and removal proceedings. Scient, Inc (formerly iXL Enterprise, Inc.) New York, NY May 2000 – present Senior Counsel/Assistant General Counsel/EVP of Corporate HR – Responsible for all technology licensing and transactions (customized software, web site builds, portals, intranets), branding agreements, licensed copyright and trademark materials, nondisclosure/confidentiality agreements, strategic alliance agreements, vendor agreements, ASP agreements, hosting agreements, acquisitions, leases, litigation, collections and related suits for the US. Developed IP portfolio and manage all intellectual property matters for the company in the U.S. (9 offices) and Europe (UK, Benelux, Germany, Italy and Spain) including procuring, protecting and/or enforcing patents and trademarks, confidential information, trade secrets, copyrights, and related proprietary rights, as well as oversaw outside counsel in Brazil, Japan and Australia regarding IP and other corporate matters. Investigate internally all potential patents (inventor disclosures and processes), prepare internally and personally file all trademark applications and responses for the USPTO (including appeal and opposition proceedings) and all copyright filings in US. EVP of HR duties include analysis and successful implementation of six Reductions-In-Force and numerous office closings/spin-outs (WARN Act and ADEA issues), all severance matters, employment agreements, audit of federal law compliance, establish new EEO policy, revamp Employee Manual, and work closely with Executive Management on all employment and business development related matters. Supervise staff of five (3 attorneys and 2 support members). Friedman Siegelbaum, LLP, New York, NY
(merged into Goodwin Proctor) Senior Associate - Managed firm's entire trademark practice. Prepared patent, trademark and copyright licenses. Prepared and filed pleadings, motions to dismiss, and discovery in patent, trademark, copyright and non-intellectual property state matters. Client counseling for technology companies included basic incorporation, registration of domain names and trademarks and taglines, prepared and reviewed vendor contracts, content licenses and web site development agreements, prepared and reviewed employment contracts and other aspects of small businesses. Managed and oversaw prosecution of over 300 laser-related applications and issued patents (e.g., LASIK/PRK, MRI, liposuction and teeth whitening) including intense client and foreign associate contact. Prepared and prosecuted patent and trademark applications including appeal briefs, reexamination and reissue applications, interference proceedings, and cancellation and opposition proceedings before the USPTO. Responsible for all patent and trademark infringement and validity opinions for the firm. Assisted partners in non-intellectual property related issues including New York practice, family law and employment/labor law issues. Supervised junior patent attorneys and paralegals. (Moved with partner of former firm -- Richard Samuel) Cobrin, Gittes & Samuel, New York, NY January 1997-August 1998 Associate - Prepared copyright, trademark, and patent licenses. Managed patent, trademark and copyright litigation from pleadings to motions (preliminary injunctions, dismissal and summary judgment) through discovery, including claim construction charts and Markman hearing, until final pre-trial orders (jury instructions). Drafted and argued motions and attended court conferences. Prepared witnesses for trial and deposition. Defended and conducted depositions of inventors and expert witnesses. Patent and trademark prosecution included writing applications, preparing responses to Office Actions, and drafting motions in a cancellation proceeding. Prepared patent and trademark infringement opinions and trademark search reports. Managed and was responsible for all aspects of employment/labor law issues for the firm. Office Of The Westchester County Attorney, White Plains, NY 1991-1997 Assistant County Attorney Litigation Bureau (February 1994 - January 1997) - General counsel for the County Executive, Commissioners and Board of Legislators. Specialty emphasis in employment/labor law and civil rights defense (discrimination allegations, ADA and FMLA issues). Areas of practice included contracts, municipal licenses, lease and eviction proceedings, compliance with federal and state laws for funding, and rendering opinions for the County Executive and Board of Legislators. Involved in all aspects of pre-litigation and resolving disputes without court involvement. Lead counsel on three federal trials (two jury) and second chair on two federal jury trials. Pre-trial experience included: pleadings, motions (dismiss, preliminary injunctions, summary judgment, objections to magistrate orders), all facets of discovery including arguing motions, defending and conducting depositions of fact and expert (economic and medical) witnesses, and participating in court conferences. Post-trial experience included: drafting and arguing motions for judgment notwithstanding verdict, new trial and remittitur, and assisting in appeals. Drafted legislation and Local Laws. Conducted dozens of diverse administrative hearings including disciplinary hearings. Oversaw and reviewed the work of junior attorneys. Family Court Bureau (April 1991 - January 1994) - Lead counsel for child abuse and neglect bench trials, including conducting examination of medical and psychiatric experts. Drafted and argued motions and drafted pleadings. Conducted hundreds of child support/paternity hearings. Honorable Paul E. Cheeseman, Albany, NY Summer 1989 Confidential Law Clerk - Researched and drafted pleadings, forms and memorandum of law. New York State Assembly Minority Leader, Albany, NY January - June 1989 Researched and drafted legislation, Counsel Memorandum and Sponsor's Memorandum in Support of Bills, and compiled bill histories. NONLEGAL EXPERIENCE: STAR MAGAZINE, Tarrytown, NY September 1990 - April 1991 Reporter and Copy Editor EDUCATION: ALBANY LAW SCHOOL OF UNION UNIVERSITY, Albany, NY J.D., May 1990
STATE UNIVERSITY OF NEW YORK, WCC, Valhalla, NY A.S., May 1998 Undertook an Engineering Science Degree at night in order to qualify to take the Patent Bar Relevant courses: Anatomy & Physiology; 2 years of Engineering Physics, Chemistry (Inorganic and Organic), Mechanical Engineering (Construction and Drawing) and Electrical Engineering. COLLEGE OF MT. ST. VINCENT, Riverdale, NY B.A., May 1987
SPECIAL INTERESTS: TerryTours -- Started own business as a Travel Consultant/Agent (1996 - present) Former World Competitor - Irish Step Dancing
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