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John P. Foryt
2560 Mary Fox Drive, Gulf Breeze, FL 32563
850-982-3083 - forytpatent@gmail.com
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GLOBAL INTELLECTUAL PROPERTY ATTORNEY
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Versatile business-focused attorney offering a solid track record in all aspects
of Intellectual Property Law. Articulate professional who thrives on close
client rapport and particularly excels at patent application drafting and
prosecution, patent portfolio management, and preparing patentability, validity,
and infringement opinions. Highly proficient at procurement and enforcement of
global trade secret, trademark, and domain rights. Proven and established
success at preparing and negotiating the contracts necessary for partnerships in
developing, protecting, and monetizing intellectual property. Known for adding
significant value by deploying and leveraging a synergistic combination of legal
proficiency, industry knowledge, analytical / research savvy, and business /
commercial acumen to influence key stakeholder decisions and drive client
success.
CORE COMPETENCIES
- Patent Law
- Patent Searching / Application / Prosecution
- Trade Secret Law
- Trademark Law
- Internet / Domain Law
- Mergers and Acquisitions
- Pre-Litigation Due Diligence, Strategy, Execution
- Department Staffing, Mentoring, and Administration
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- Budget Management
- Client Counseling
- Collaborative / Innovative Leadership
- Strong Analytical Skills
- Excellent Oral and Written Communication Skills
- Change Management
- Process Improvement
- Chemical & Engineering Acumen
- Issue Identification, Analysis, and Resolution
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PROFESSIONAL EXPERIENCE
Eastman Chemical Company,
Kingsport, TN | 1992 - 2016 |
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Eastman is a $9.5B global specialty chemical company advanced materials, additives
and functional products, specialty chemicals, and fibers found in products people
use daily. In 2012, Eastman acquired subsidiary Solutia Inc., a $2.1B specialty
chemical company which in 1997 was created by spin-off from Monsanto Company.
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| Senior Counsel | 2013 - 2016 |
| Functions as expert and lead contact for post-acquisition
integration of all Solutia Intellectual Property (IP) matters into Eastman.
Accountable for patent- and technology-focused IP support of legacy Solutia Flexsys
rubber chemicals, Performance Films businesses, and Eastman Corporate Innovation
Group.
- Successfully prepares and prosecutes patent applications; performs freedom to
operate clearances; drafts IP-related agreements; supports IP aspects of M&A
activity; provides general counseling and education services; and supports outside
litigation counsel.
- Establishes and executes global strategy for managing contentious brand matters
for Performance Films business, including judicial and administrative enforcement
actions and oppositions regarding counterfeit, parallel importation and related issues
in the trademark and domain space.
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Chief Intellectual Property Counsel, Solutia Inc.,
St Louis, MO, Pensacola, FL | 2003 - 2012 |
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Intellectual Property Counsel, Solutia Inc. and Monsanto Co.
Pensacola, FL | 1996 - 2003 |
| Accountable for enterprise-wide global IP strategy development
and execution. Managed global IP team, including budget administration, library
function, and supervision of six individuals, including attorneys and paralegal
support.
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| Eastman Chemical Company, Chief Intellectual Property Counsel, Solutia Inc. (continued)
- Championed day-to-day patent- and technology-focused IP matters for Flexsys rubber chemicals, interlayers, and
Pharmaceutical Services business, including development and execution of unit IP strategy; drafted and negotiated IP agreements and IP components of commercial transactions.
- Guided Solutia Inc. through a five-year bankruptcy proceeding, protecting its IP assets, managing its people resources, and maintaining relationships with and continuing support from external service providers.
- Created, managed, and grew an Asia Pacific IP organization with a team of experts for on-the-ground identification, analysis and resolution of regional counterfeiting and product channel management issues.
- Developed / maintained / enforced corporate trademark and domain name portfolio, including resolution of Internet, social media, advertising, parallel importation and counterfeiting issues.
- Spearheaded IP aspects of M&A, litigation, compliance, record retention, export and education programs.
- Managed outside counsel oversight for patent preparation / prosecution, infringement / validity analyses, patent litigation, freedom to operate clearances and strategic counseling.
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Patent Attorney, Monsanto Co.,
Pensacola, FL | 1992 - 1996 |
| Responsible for patent- and technology-focused IP support of fibers
unit of Integrated Nylon business, including preparation and prosecution of patent
applications, performing freedom to operate clearances, drafting IP-related agreements,
providing general counseling services and supporting outside litigation counsel.
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Jones, Tullar and Cooper, P.C.,
Arlington, VA | 1985 - 1992 |
| Law firm practicing in patent, trademark, unfair competition,
copyright practice, and intellectual property law.
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Associate
Associate Served five-attorney boutique IP firm as Patent Researcher, Patent Agent (effective 1988),
and Attorney (effective 1990), conducting patent / legal research, preparing / prosecuting
patent applications, rendering patentability and infringement opinions, providing
litigation support and managing chemical search docket and staff.
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EDUCATION
Juris Doctorate (J.D.), 1990
American Jurisprudence Award recipient for Conflicts of Laws, Advanced Evidence
George Mason University School of Law, Arlington, VA
Bachelor of Science (BS) in Chemical Engineering, 1985
University of Notre Dame, Notre Dame, IN
ADMISSIONS TO PRACTICE
State of Tennessee, January, 2013 - Present (Multi-Jurisdictional Practice)
Commonwealth of Virginia, 1990 - Present
United States Patent and Trademark Office, 1988 - Present
Court of Appeals for the Federal Circuit, 1996
AWARDS
In-House IP Counsel of the Year (Solutia team), Intellectual Property Magazine, 2010
PUBLICATIONS
"Effect of Segmental Diffusion on Step-Growth Polymerization of ARB Monomers",
27 Polymer Engineering Science, pp. 753-763 (1987).
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