Experience

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  BOLD

  • Puerto Rico
  • Software Development
  • 700 & Above Employee

  • Senior Counsel II, IP and Litigation

    • Oct 2023 - Present

  • Intellectual Property Lead

    • Apr 2021 - Oct 2023

  • Senior Associate, Corporate and Business Affairs

    • Jan 2019 - Apr 2021

    - Provide legal advice to cross-functional teams in Puerto Rico, California, Poland, India, and New York, to ensure compliance with international laws and regulations relating to privacy, consumer protection, data protection, security, content, intellectual property, and other relevant laws.- Devise and implement strategies for IP portfolio management across multiple jurisdictions, including IPR prosecution, registration, acquisition, licensing, and offensive and defensive assertion initiatives.- Draft, review, and negotiate key contracts in the e-commerce space, including SaaS agreements, strategic partnerships, marketing deals, digital advertising buys/IOs, research participation agreements, professional services agreements, product support, and other agreements with commercial customers and partners.- Assist in the development, application, and enforcement of the Company’s privacy and data security policies, standards, guidelines and best practices for all our websites and mobile apps, to ensure compliance with U.S. and international data privacy laws and regulations, including GDPR and CCPA.- Review and provide advice on marketing and advertising campaigns, ensuring claim substantiation, non-violation of third-party rights, and compliance with relevant laws. Prepare responses to customer protection bodies, enforcement agencies, and advertising regulatory entities worldwide.- Assist with corporate M&As and related legal due diligence.- Engage and supervise work of outside counsel, and ensure cost-effective use of their services.

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  U.S. International Trade Commission (ITC)

  • Washington D.C. Metro Area

  • Counsel to Chairman David S. Johanson

    • Jan 2018 - Jan 2019
    • Washington D.C. Metro Area

    -Advised the Chairman in investigations under Section 337 of the Tariff Act concerning alleged violations of IP rights in import trade, and other unfair methods of competition. -Advised the Chairman in import injury investigations, including antidumping and countervailing duty proceedings under Title VII of the Tariff Act of 1930 and global safeguard and market disruption investigations under the Trade Act of 1974. -Provided advice regarding litigation of Commission decisions.

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  U.S. International Trade Commission (ITC)

  • Washington D.C. Metro Area

  • Law Clerk at the Office of Vice Chairman David S. Johanson

    • Jan 2017 - May 2017
    • Washington D.C. Metro Area

    • Reviewed case record; conducted legal research; attended hearings; and drafted bench memoranda in investigations involving alleged infringement of IP rights and unfair practices in import trade under Section 337 of the Tariff Act. Provided recommendations regarding potential courses of actions and assisted in preparing the Commissioner for votes and oral arguments.• Attended hearings and received training relating to antidumping duty and countervailing duty investigations.• Reviewed hundreds of petitions for duty suspensions and reductions under the Miscellaneous Tariff Bill Petition System (MTBPS) and recommended courses of action in connection therewith.

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  Ferraiuoli LLC

  • Associate Attorney- Intellectual Property Department

    • Sep 2013 - Jul 2016

    Represented and advised clients in all sorts of intellectual property, privacy and information technology matters, which included: * Prosecuting and/or defending infringement lawsuits before the United States District Courts of Puerto Rico, Delaware, Eastern District of Texas, and the Northern District of California; * Assisting clients with data privacy and information security issues; * Portfolio management; * Prosecuting and/or defending patent and trademark administrative proceedings before the USPTO and the Puerto Rico Trademark Office (including office actions, inter partes reviews, oppositions to registration and cancellation requests); * Furnishing protectability, infringement, liability, freedom to operate analyses; assessing patent validity and/or enforceability; * Drafting IP licensing agreements; * Preparing and/or delivering seminars, conferences and CLEs on IP-related matters; * Translating all sort of legal documents (English/Spanish); * Preparing and/or responding to cease and desist letters; and * Drafting appellate briefs, trial motions, claim construction memoranda, discovery requests, among others.I also provided support to the firm’s corporate and commercial litigation practices, which included providing cross-functional counseling to clients on general corporate matters relating to business and commercial operations, corporate governance and compliance regarding federal and state laws and regulations, and representing clients at appellate and trial level before federal and state courts in a wide array of complex litigation matters.

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  Ferraiuoli LLC

  • Student Associate (Full time)

    • Jun 2010 - Jul 2013

    Provided support to the firm’s intellectual property, corporate, litigation and labor and employment practices, which included conducting research and analysis of sources of law, drafting contracts and opinions on all sorts of legal issues, and assisting in the preparation of presentations, articles and continuing legal education courses on IP-related matters. Also responsible for the translation of documents (English/Spanish), the generation of briefs, motions, arguments, and all related legal memoranda with primary focus on federal litigation and appellate practice before the Puerto Rico Courts of Appeals and the Puerto Rico Supreme Court, the United States District Court for the District of Puerto Rico, and before the United States Court of Appeals for the First Circuit.

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  Rodriguez Fernandez Law Offices LLC

  • San Juan, Puerto Rico

  • Legal Business Analyst

    • Feb 2010 - Jun 2010
    • San Juan, Puerto Rico

    Responsible for collecting and reviewing data and information from multiple sources to provide analysis support to the in-house law firm of an investment and debt collection company.Performed analytic computations necessary to process data. Prepared written correspondence, reports, and briefing papers. Monitored, supervised and reviewed collection team productivity and performance (around 19 employees). Also responsible for running the logistics for the execution of a high load of favorable court judgments (aprox. 300 cases per month), including the supervision of the paralegal team. Performed IT management tasks, dealing with all technical issues.

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  mirus Consulting Group

  • Pharma/Biotech - Validation Engineer

    • Sep 2006 - Jul 2009

    Responsible for the development and/or execution of ISO 9001 documentation, Validation Plans, Risk/GxP Assessments, System Design Specifications, User and Functional Requirement Specifications, Commissionings, Installation, Operational and Performance Qualification Protocols, Traceability Matrixes and Summary Reports, and for communicating and resolving technical issues, as well as for the generation and issuance of Change Control/Requests, Master Batch Records and SOPs, and for providing the corresponding training.

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  Ingenieros del Toa (IDT) Inc.

  • Puerto Rico

  • Industrial Safety Consultant

    • Jul 2006 - Sep 2006
    • Puerto Rico

    Responsible for inspections and audits to assure compliance with requirements from OSHA and all pertaining industrial safety regulatory agencies.

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  PREPA

  • Headquarters (Santurce, PR) and Aguirre Complex (Salinas, PR)

  • Environmental Engineering Intern

    • Aug 2005 - Dec 2005
    • Headquarters (Santurce, PR) and Aguirre Complex (Salinas, PR)

    Responsible for designing and conducting Wastewater Treatment Plant optimization studies for pH, flow rate and weir design, and for performing EPA NPDES and PR EQB’s sampling and reports. Upgraded filing and data gathering structure to a computer-based system. Assisted on DEMI plant daily operation. Responsible for performing spectrophotometric analysis, equipment calibrations, titrations, calibration curves, process drawings and material balances. Prepared Aguirre Complex’s Explosive Monthly Report.

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  Kimberly-Clark

  • Research and Engineering Complex, Wisconsin, USA

  • Research and Development Intern

    • Aug 2004 - Dec 2004
    • Research and Engineering Complex, Wisconsin, USA

    Responsible for the creation and execution of process capability studies, and for the analysis and handling of consumer complaints, which included leading root cause and problem solving sessions (using Kepner-Tregoe model) and implementing CAPAs. Performed material tensile strength and elongation studies, data trend analysis and test method validations. Designed, placed and reported consumer and quality studies.

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  University of Puerto Rico

  • Alternative Fuel Sources Laboratory (Mayagüez, PR)

  • Undergraduate Research Assistant

    • Aug 2003 - Dec 2003
    • Alternative Fuel Sources Laboratory (Mayagüez, PR)

    Responsible for testing sonoluminiscence and sonic mixing techniques for biodiesel production, including working with HPLC and analytical handling of samples. Selected as spokesperson for presenting research results at the 2003 AIChE Fall Annual Meeting in San Francisco, CA.