About
My interest is in working with inventors and companies to create and maintain intellectual property departments and intellectual property portfolios to maximize the return on the investment of time and money in discovering, prosecuting, and managing all intellectual property assets.
Specialties: Patent preparation and prosecution for electrical, computer, software, electro-mechanical, and mechanical methods, devices, and systems. Intellectual property protection counseling and strategy. Training for in-house staff and contractors on the discovery, capture, tracking, maintenance, and report generation for all internally generated corporate IP assets.
Work history
Founder / Principal | Patent Attorney
Sotomayor IP Consulting, Ltd.
May 2014 – Present (6 months)Cary, NC
Consulting to small and mid-size businesses on services for the discovery, capture, prosecution, and management of Intellectual Property assets. We provide both direct patent and trademark preparation and prosecution services as well as training for in-house staff to manage, track, and report on IP creation and status. Providing a complete range of services to serve as the IP department for companies.
In-house Patent Counsel
TiVo
February 2014 – May 2014 (4 months)Durham, NC
Patent discovery and description for in-house inventors. Coordinate patent activities with TiVO patent prosecution counsel, manage interaction with inventors, and track and report on patent activities as needed. Currently remain of counsel to TiVO on a contractual basis.
Director of Intellectual Property
Digitalsmiths
April 2011 – January 2014 (2 years 10 months)
Developed an IP department for Digitalsmiths including filing and prosecuting patent applications, integrating acquired patent portfolio into Digitalsmiths existing portfolio, invention discovery, managing outside counsel, coordinating with overseas counsel, tracking and maintaining all intellectual property assets. Digitalsmiths was acquired by TiVO on January 29, 2014 in part based upon the strong IP portfolio generated and maintained by Digitalsmiths.
Patent Agent
Sotomayor IP Consulting, Ltd.
August 2007 – May 2011 (3 years 10 months)
Performed contract patent preparation and prosecution activities including writing and filing patent applications, preparation of responses to USPTO Office Actions and other communications, conducting telephonic interviews with patent examiners, assisted clients with creation and tracking of IP portfolios.
Patent Agent
Integrian, Inc.
July 2005 – July 2007 (2 years 1 month)
preparation and filing of patent applications, patent prosecution, IP protection strategy and management of patent portfolio.
Patent Examiner
US Patent Office
2002 – 2005 (3 years)
Examined patent applications directed to networked computers, device simulators and training apparatus. Filed responses to PCT demands.
Project Manager
Tensor Information Systems
1998 – 2000 (2 years)
Regional Manager
Tensor
1998 – 2000 (2 years)
Education and qualifications
North Carolina Central University School of Law
Juris Doctorate, Law
2007 – 2011
Completed a Juris Doctor degree with an emphasis on Intellectual Property law, assisted clients in Trademark clinic as student attorney through special program at USPTO.
New Mexico State University
Bachelor of Science (BS), Electrical and Computer Engineering
Bachelor of Science in Electrical and Computer Engineering.
