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The Law Office of
Gerald R. Prettyman
U.S. Patent Attorney
Attorney at Law, California and Minnesota
Protection for All Your Ideas Under the Sun®
Gerald R. Prettyman passed the patent bar and has been drafting and prosecuting patents since 2001. He earned a law degree in 2005, passed the California Bar Exam in 2006, earned a post-graduate law degree in intellectual property in 2007, and was admitted to the Minnesota Bar in 2009. He has been creating intellectual property value for start-ups and other businesses and preventing and solving legal problems since 2006. Mr. Prettyman was a hands-on engineering manager from 1993 to 2001 and adept at improving throughput and profit and decreasing defect losses. Mr. Prettyman got his start in engineering in 1986 working with nuclear technology companies in engineering design and product testing. Since becoming an attorney, he has two published law review articles, several published bar association articles, a law blog and makes periodic contributions to other online legal blogs. Mr. Prettyman was formerly a medical technician with the U.S. Navy and in the private sector.
Intellectual Property Law, Registered Patent Attorney and Business Counsel,
Law Office of Gerald R. Prettyman, November 2008 to Present.
As an intellectual property and patent attorney, I counsel clients on protecting and monetizing ideas, and I create monopolies using a combination of patents, trademarks, copyrights, contracts and domains.
Ø I prepare, file and prosecute patent applications (provisional, non-provisional and design), trademarks (federal and California) copyright, as well prepare and file documents for incorporation, LLC and non-profit entity formation. I also advise and assist clients on issues of enterprise development and corporate law.
Ø My business practice includes drafting operating and vesting agreements, confidentiality, non-disclosure and trade secret agreements, contract and professional service agreements, licenses, assignments and competitive-definition agreements.
Ø My intellectual property practice includes patent search and validity analysis, freedom to operate opinions, patent licenses, trademark cease and desist and licensing, the use of electronic commerce and the Internet, and regulatory compliance.
Ø I also research novelty and obviousness issues, infringement prevention and analysis. I've amended a copyright infringement complaint based on software derivation for a software company.
Ø I also consult with Bay Area Entrepreneurs Workshop to coach start-ups on pitch preparation and practice.
Ø My clients include: Accusplit Inc., AirDancers, Bay Area Entrepreneurs Workshop, California Sunlight Corp., Childrens Choice Foods LLC, ConnectWell Inc., Council Photographics, Devise Solutions, Funtastic PhotoBooth, Girls Night Out Networking, Grand Voir Dire, KarFarm LLC, Layover Pillow Inc., Le Sanctum Slimming and Beauty Spa, O-D-O, Peoplebees Inc., Philmaking Consulting Inc., PolyDiamond Technologies, Proximity Design Systems LLC, Rev Up Software Inc., Sahara Market Inc., School of Imagination, Social Deal Map, Software For Moving Inc., The Gates, Yogurt Espresso LLC, 1st Resort Mediation, A NYLegend, Business Builders USA, and others.
Patent Attorney, Carr & Ferrell, Palo Alto, August 2007 to November 2008.
Conducted client interviews, and prepared and prosecuted U.S. and PCT patent applications.
Ø Software: automated network access, malware detection, error detection and correction, language translation and social networking.
Ø Hardware: memory optimization, memory stacking, and application specific integrated circuits.
Ø Business methods: interface and tracking of parallel processes, document recording and tracking.
Ø Biofuel development and fluid dynamics.
Patent Agent, Patent Office of Gerald R. Prettyman, 2001 to 2007.
Drafted and prosecuted patent applications while earning a J.D., and an LL.M in Intellectual Property.
Ø Drafted and prosecuted inventions in disability assistance: Step-Shaped Staircase Lift (US 7,484,595) and Spoon with Extendable Straw (US 7,047,648).
Ø Prepared applications for Embedded Watermark (US 2007/0026204), Portable Immersible Pool Chair (US 2008/0092285), Adaptive Smart Memory Card (US 7,232,074), Flexmount Optical Waveguide, Compliant Layer Chucking Surface (US 6,835,415), and RV Stabilizer (US 6,695,348).
Ø Researched patent ownership dispute and prepared complaint for declaratory relief.
Senior Quality Engineer, Nitinol Devices & Components (a Johnson & Johnson Company) 1997 to 2001.
NDC designs and manufactures custom medical devices, stents, and non-medical components made from super-elastic, shape memory nickel-titanium alloys.
Ø Increased production 300% and reduced returns 25% by creating quality-focused operating procedures and training employees in defect awareness and prevention.
Ø Increased sales 200% and reduced expenses 20% by coordinating custom order specifications with "Certified Supplier" and "Dock-to-Stock" programs to achieve First Time Right customer satisfaction.
Ø Reduced personnel requirements 25% by developing semi-automated microscopic inspection programs for medical device inspection with computer-to-computer data transfer.
Ø Achieved FDA & ISO9001 regulatory compliance in 18 months by actively educating employees, tracking employee training, and developing streamlined management summaries.
Quality Engineer and Manager, Costar, Galoob, Pier Electronics and Westec Corporations, 1991 to 1997.
Ø Reduced design delays by 10% by ensuring sales collected sufficient information for board design.
Ø Improved cash flow by 5% by negotiating blanket orders for Just-In-Time delivery. Reduced insurance premiums by 25% by properly classifying employees and negotiating premiums.
Ø Implemented consumer testing program to determine reliability and satisfaction.
Ø Reduced product failures from 90% to 10% by locating root-cause defects.
Ø Reduced production cost by 40% and labor by 5% by designing automated production processes.
Ø Reduced downtime by 25%, scrap by 5% and saved $10,000/yr. by optimizing product components and improve sealing capability. Designed inspection tools to reduce QC time by 5%.
Nuclear Engineer, Southern California Edison, Mare Island Naval Shipyard and Nuclepore, 1986 to 1991.
Ø Prepared and directed validation tests on nuclear power propulsion plant modifications and repairs.
Ø Examined nuclear plant components and reviewed drawings to add detail to maintenance records to reduce delays and expenses.
Ø Prepared and filed a material handling petition saving $60,000 a year in nuclear regulatory expenses.
Medical Laboratory Technician, Scripps Hospital San Diego and St. Rose Hosp. Hayward, 1983 to 1985.
Ø Collected and tested clinical samples for hematological, chemical and serological factors.
Military: U.S. Navy, 1976 to 1982. Good Conduct Award 1980.
Duty Stations: N.R.M.C. Oakland 1977-1982, N.R.M.C. San Diego 1976-77.
Medical Laboratory Technology Certificate 1977; Hospital Corpsman Certificate 1976.
Ø Collected and tested clinical samples for hematological, chemical and serological factors.
Ø Emergency response team member. Prepared blood for transfusion. Trained staff in medical testing methods.
GOLDEN GATE UNIVERSITY SCHOOL OF LAW, SAN FRANCISCO
Master of Laws in Intellectual Property, 2007 (G.P.A.: 3.72): U.S. Trademark Law, U.S. Copyright Law, Intellectual Property Litigation, Electronic Commerce, and International Intellectual Property Law.
Doctor of Jurisprudence, 2005. Specialization Certificates with Distinction in Intellectual Property & Real Estate. Author of: "Intergenerational Real Property Holdings and Transfer." (Private client).
Awards: 2005 Real Estate Law Award and the 2002 CALI Property I Award (Best Essay).
Dean's List: Spring 2005, Fall 2004, Spring 2004, Fall 2003, Fall 2002.
Teaching Assistant: Property I (3 professors, 2 semesters) and Evidence.
UNIVERSITY OF CALIFORNIA, SAN DIEGO
Bachelor of Science in Mechanical Engineering, Minor in Economics, 1989.
Conducted research on chemical vapor deposition, vibration, and fluid dynamics.
Other coursework in Robotics. Charter member of the UCSD Chapter of the Society of Women Engineers.
² Legal Admissions, Registrations and Memberships
o Licensed to practice law in California (SBN 247778) and Minnesota (SBN 389572).
o Registered Attorney with the United States Patent and Trademark Office (Reg. No. 48778).
o Admitted to the United States District Court for the Northern District of California and the Court of Appeals for the Ninth Circuit.
o Member of the State Bar of California and the Minnesota State Bar Association.
o Intellectual Property Sections of the State Bar of California, the American Bar Association and the Minnesota State Bar Association.
o Eastern Alameda County Bar Association (Board member for 2010, 2011, 2012, 2013).
o American Society of Mechanical Engineers
² Business Leagues
o East Bay Executives Association since 2009, 2011 Board Member
² Service Organizations
o Rotary Club of Pleasanton North, Since 2009; Board member: 2011-12 (Sergeant at Arms), 2012-13 (Secretary)
o Rotary Club Of Pleasanton - North Foundation, Board Member 2012-2015
o Amador Valley High School Mock Trial Team Attorney Coach, 2009-10, 2010-11, 2011-12, 2012-13
SOCIAL NETWORKING: LinkedIn – geraldprettyman, Twitter – grpideas, Facebook - grplaw
International: Canada (British Columbia & Ontario), China, Hong Kong, Macau, England, Denmark, Sweden, Germany, Austria, Nassau, Jamaica, Antigua, and Puerto Rico.
U.S.: Hawai`i (Kauai, Maui, Oahu, Hawai`i), Alaska, Washington, Oregon, California, Nevada, Idaho, Montana, Wyoming, Utah, Arizona, New Mexico, Texas, Oklahoma, Colorado, Nebraska, South Dakota, North Dakota, Minnesota, Wisconsin, Iowa, Missouri, Arkansas, Louisiana, Mississippi, Alabama, Florida, Illinois, Indiana, Michigan, Ohio, West Virginia, Virginia, Washington D.C., Maryland, Delaware, New Jersey, Pennsylvania, New York, Massachusetts, and Maine.
References available on request.