Patents Online - Intellectual Property Manager (IPM)

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Mr. Ion GLUGA
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Ion Gluga

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SUMMARY

Over 20 years of corporate business support service and gained experience in the areas of research and new technology development, corporate policy design and implementation, project and change management, intellectual capital management, business adviser and consulting expert service, contracts legal due diligence and freedom to operate.

 

WORK EXPERIENCE

Intellectual Property Consulting
Sole Trader [ABN 15 515 685 032]
Mar 2015 – current

Consultancy work and service delivered as technical advisor under short-term contracts and assignments specifically set out for independent contractor relationship.

 

Intellectual Property and Development Manager (fix-term contract)
University of Western Sydney - Research, Engagement, Development & Innovation (REDI)
October 2014 – February 2015 (5 months) Werrington Campus

The University of Western Sydney is a major urban university spread over six campuses in Greater Western Sydney, New South Wales, Australia.
REDI (Research Engagement Development and Innovation) is a unit with the Office of the Deputy Vice Chancellor (Research and Development). REDI seeks to provide a broad range of support for academic staff to partner with business, government and the community.

Achievements:

  • provided strategic IP and legal advice, recommendations towards IP commercialisation path and technology transfer alternatives;
  • established due diligence processes, developed templates and procedures for internal funding, IP assessment and executives management business decisions;
  • prepared and developed, templates, procedures, guidelines and an implementation plan for Easy Access IP Initiative at UWS;
  • gathered and consolidated patents and trade marks corporate records, information on current UWS's innovation commercial licenses and contracts into an in-house developed Microsoft Access database (unIon - still under development of new integrated modules such as designated for project management auditing, Patent and Trade Mark Attorneys' case-file management, renewals, royalties distribution etc.).

 

Intellectual Property Consulting
Sole Trader [ABN 15 515 685 032]
April 2013 – September 2014 (1 year 6 months) Sydney

Consultancy work and service delivered as technical advisor under short-term contracts and assignments specifically set out for independent contractor relationship.

Achievements:

  • extensive experience handling a variety of different clients through various levels of communication and a variety of contractor opportunity across corporate IP management and administration;
  • enhanced expertise in legal research, intellectual capital valuation and assessment, direct interaction with external consulting agencies and professional service providers.

 

Intellectual Property Manager
University of New South Wales - NewSouth Innovations Pty Limited (NSi)
May 2007 – March 2013 (5 years 11 months) Sydney

NewSouth Innovations is the gateway to research discoveries and inventions created at the University of New South Wales. UNSW is one of Australia's leading research and teaching universities, and has more than 52,000 students.

Achievements:

  • secured quality invention disclosures (in-take from 130 to 160 each year) through IP legal ownership due diligence (LODD) assessments, researcher deeds and inventor assignments execution to establish UNSW IP Rights and ownership;
  • joined NSi executives and senior professionals, external Patent Attorneys and venture capital representatives as Technology Review Committee (TRC) permanent member and LODD reports writer prior to any IP commercial decision;
  • partnered NSi logistics (process and procedures review; templates design and development in alignment to UNSW’s IP Policy) for Easy Access IP new model implementation (started in Nov. 2011), first of its kind in Australia, to accelerate UNSW transfer of IP into commercial use and knowledge exchange;
  • ensured an active case management and in-house full trademark service by reducing almost integral NSi’ cost with previously outsourced similar service;
  • invited Chair and Speaker at TONKIN’s IP Management & Commercialisation Conference, 13th - 15th August 2012, Sydney.

 

Intellectual Property and Licensing Manager
University of Technology, Sydney - Research & Innovation Office (RIO)
April 2006 – April 2007 (1 year 1 month) Sydney

The Research and Innovation Office (RIO) is responsible for University of Technology, Sydney (UTS) contract and collaborative research, and for research commercialisation.

Achievements:

  • actively managed a 700+ case portfolio ranging from new invention disclosures (60/year) to licensed technologies (35) with an annual allocated budget >$1.2 M which covered about 450 patent files (of 135 patent families), 70 trademark cases and approx. 60 trading names;
  • performed in-house preliminary patent search, new trademark and trading names availability checking before engaging external professional service (Attorneys and Lawyers) or initiating a registering procedure (ASIC);
  • managed and enforced licenses due diligence;
  • organised and led the request tender process (RFT) for Patent Attorneys Service (selection, review and appointment), a complex task with exemplary work acknowledged by the DVC(R) description of the process as a "very professional job";
  • successfully registered UTS's full name as an Australian Trade Mark (1034679);
  • designed, developed and implemented UniTion IP Database (a Visual Basic and Microsoft Access application with a friendly user interface) to consolidate and update all UTS’s IP records (from a large number of spreadsheets) in line with the new filing and document management created systems.

 

Intellectual Property Officer (IPO)
Aristocrat Technologies Australia Pty Ltd
January 2003 – March 2006 (3 years 3 months) Sydney

With over 60 years industry experience, over 2000 staff globally and strong brand equity in more than 200 jurisdictions around the world, Aristocrat is a premium supplier of groundbreaking technologies and services to the international gaming industry.

Achievements:

  • developed experience in managing large corporate IP Portfolio (approx. 2,500 patent files and 3,500 trademark cases corresponding to main jurisdictions of Aristocrat global business) and provisions of Intellectual Property legal services within an annual budget in excess of $3M (including all prosecution and maintenance cost);
  • served as lead organiser for monthly IP Advisory Group (IPAG) and biannually IP Committee (IPC) phone & video conferences with senior R&D managers and corporate executives among offshore offices and with the head office;
  • managed the administrative aspects of patent and trademark oppositions (30 to 50 active cases/year) during registration and infringement disputes for internal and external lawyers, filings, communication with opposing counsel, preparation of post-deal closing documentation and assisting lawyers during deal closure;
  • created from scratch NatIonALI (IP database) as Aristocrat’s global IP records management system, organised and lead Vision II patent portfolio one-day workshop (May 2004) with an astonishing outcome (review, assess value, and categorisation of entire patent portfolio), and conducted a complete internal auditing report for Global General Counsel and CEO;
  • developed expertise in auditing and implementing IP compliance processes and procedures, legal research and complex forensic investigation, managing IP matters related to R&D major programs and strategic projects, overseeing media content and all marketing related materials before publication;
  • organised the 2010 Realise IP Gathering (a group of top 20 IP companies from all over the world led by ICM Gathering and its co-founder Suzanne S. Harrison) hosted by Aristocrat for two days.

 

Licensing Officer
University of New South Wales - Unisearch Limited
August 2000 – December 2002 (2 years 5 months) Sydney

Unisearch, now renamed NewSouth Innovations, it was wholly owned subsidiary of UNSW and the first organisation of its kind in Australia. Its aim was to make available specialised service and advice to industry and commerce, as well as to administer patents taken out on inventions developed at the university.

Achievements:

  • managed the in-take new invention disclosures/IP Notifications (90 to 120/year) and performed preliminary prior art and patentability searches by using web based free resources (USPTO, JPO, Espacenet and IP Australia’ IBM Main Frame) minmising the use of (infringement cases) online commercial patent databases (such as Aurigin/Aureka, Delphion, Global IP Estimator and NERAC);
  • managed the filing and prosecution of UNSW’ patent, trademark and industrial design applications through coordinated interactions with external attorneys as appointed by Unisearch;
  • audited all existing license agreements and integrated “live” IP to full compliance levels on technical, financial and contractual requirements to the existing portfolio;
  • established a knowledge management system (THEOvisION) for IP corporate records and commercial license agreements monitoring and tracking standard events (revenue and due millstone payments from licensing agreements, patent costs eligible to reimbursement, inventors royalties payment) and status;
  • regularly reviewed technology transfer license and consulting/services agreements to ensure Unisearch’s position was protected.

 

Intellectual Property Consultant
Patents Online Pty Ltd
1998 – 2000 (2 years) Sydney

A startup private company categorised under Patent Search and designed to online intellectual property consulting services.

Achievements:

  • successfully delivered a personal business service to customers online as individual consultant in intellectual property;
  • managed serviced assignments, staying on schedule and within budget, to meet expectations of my clients from a broad array of institutions and organisations, professionals and individuals;
  • maintained professional work practices to ensure that conflicts of interest did not arise while working for a variety of clients on IP management.

 

Administrative Service Officer
IP Australia (former AIPO)
1994 – 1997 (3 years) Sydney

IP Australia is the Government agency responsible for administering IP rights in Australia.

Achievements:

  • experience delivering effective outcomes working with customers of all backgrounds including business owners, inventors and law firm partners;
  • processing the IP daily lodgement documentation, from individuals and in bulk from Patent and Trade Mark Attorneys/Law firms, in compliance with patent and trademark IP Australia office procedures, statutory acts and legislation, working to tight daily deadlines and extremely high accuracy;
  • liaised with other State Offices and business units (patent examination, PCT, trademarks, industrial design, Hearing Officers) in Canberra.

 

OVERSEAS EXPERIENCE

July 1985 – September 1993 (8 years 3 months) Petrosani-Campulung Muscel-Bucharest
Senior Consulting Engineer (1989-1993)
The Romanian Mining Ministry/National Coal Division, Romania
&
Mine Engineer (1985-1988)
Campulung Muscel Colliery, Romania

Achievements:

Gained substantial experience in engineering, underground coal mine production, planning and forecasting, diverse range of functions and consulting work in multi-disciplinary teams.

 

PROFESSIONAL MEMBERSHIP:    Member of the Licensing Executive Society (LESANZ and International)





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