Arlene advises clients on a broad range of intellectual property (IP) and business law matters, with emphasis on high technology patent law. She counsels domestic and international clients to define and execute intellectual property strategies, manages intellectual property harvest sessions for new products, manages multiple patent and trademark portfolios, ensures that assets acquired by clients have adequate claim scope and ensures that claimed subject matters are aligned with business goals. Arlene also counsels clients during the acquisition of intellectual property rights and prepares opinions regarding commercial aspects of selected intellectual property rights.
Arlene’s professional experience includes executing IP prosecution and transactional matters. For IP prosecution, Arlene drafts and prosecutes domestic and international patent applications in various technical fields (she has personally drafted over 600 utility patent applications). She also files and prosecutes reissue applications and participates in America Invents Act (AIA) post grant proceedings. Arlene also prepares and prosecutes trademark applications.
For IP and business transactions, Arlene prepares patentability, freedom-to-operate, infringement, and invalidity opinions. She also performs acquisition due diligence analysis and drafts and reviews contracts, licenses and other agreements.
Arlene is well versed in computer software and hardware, networking, telecommunications (including wireless/wired transceiver chains, ad-hoc wireless communications, infrastructure wireless communications, inter-system communication and coordination, wired network communications (LAN/WAN, TCP/IP, etc.)), secured communications/encryption (including public/private keys, trust schemes, public/private certificates), display interfaces for devices (mobile station, infrastructure, etc.), geo-location systems, radio frequency ID (RFID) systems, user-device collaboration, cloud computing, semiconductors, consumer products, fiber optics, electronic circuits, medical devices, machinery, data storage systems, Internet technology, satellite transmissions, digital imaging systems, battery design (electrical, mechanical, and chemical), circuit design, wireless and wired power transfer, and business methods.
In addition to her legal experience, Arlene also brings a wealth of industry experience to her clients. Before practicing law, Arlene worked as a senior developer and analyst at Fidelity Investments where she led a team in developing testing systems for a client connectivity architecture software; as a senior software developer at Agency Management Services, Arlene led a team in developing an uploading system; and as a software engineer for GTE Data Service, she developed internal management systems.
Court & Bar Admissions
District of Columbia Massachusetts United States Patent and Trademark Office
Juris Doctor Degree, New England School of Law, 1998 Masters of Science Course Work in Computer Science, University of South Florida, 1992 Bachelor of Science in Computer Science, Grambling State University, 1989
Public & Speaking Engagement
Moderator for a Panel Presentation on “Start-Up Stock Ownership – How to Contribute IP for Equity”, AIPLA 2018 Mid-Winter Meeting Moderator for a Panel Presentation on “Outsourcing As Part of a Patent Prosecution Program – Benefits, Risks, and Making it Work”, AIPLA 2015 Annual Meeting Speaker & Author on “Functional Claims and the Required Disclosure Before and After the AIA”, AIPLA 2013 Annual Meeting Moderator for a Panel on “Cultural Sensitivities”, AIPLA 2010 Annual Meeting Co-author, “Post-Bilski: Prosecuting Software Process Claims”, Law 360, February 25, 2010
American Intellectual Property Law Association (AIPLA) (Current Chair of the Diversity Committee) District of Columbia Bar Association American Bar Association (ABA) Massachusetts Bar Association