edward choi

Negotiated transactional agreements such as consulting agreements (MSA, SOW, etc.), cloud service agreements (Cloud Service Agreements, etc.), on premise software agreements (IPLA, CRA, ICA, etc.), etc. for all IBM products and services sold in the NYC area with deal sizes ranging up to 90+ million. Negotiated supporting agreements on issues ranging from data privacy and confidentiality (NYC DFS 500, GDPR, NDA, etc.) to enterprise license software agreements. Counselled clients on how other entities (as well as other groups within IBM) approach issues such as LOL, indemnities, etc. in order for the business to make informed decisions.

* Prepared memos on copyright and trademark issues. * Edited distribution and licensing agreements.

* Advised on FCPA issues, especially dealing with transfer of monies to Vietnamese government officials. * Assisted with filing of 501(c)(3) status and charity status with several US States. * Drafted several contracts for use by OrFA with entities such as orphanages in Vietnam, partners of OrFA and volunteers. * Assisted with the filing of NGO status in Vietnam.

* Identified, drafted and prosecuted patent applications in software/hardware. * Prepared claim charts and patent proofs in anticipation for litigation. * Initiated, managed and directed outside counsel prosecuting patent portfolios. * Conducted, directed and analyzed patent searches and rendered opinions on validity, non-infringement and patent avoidance of third-party patents. * Reviewed proposed research papers and other publications for patentable subject matter and impact on existing patent portfolio.

Prepared memoranda of law on issues which included the Foreign Corrupt Practices Act, New Uniform Securities Act, Securities Exchange Act and E-Discovery. Conducted regulatory due diligence on Prudential’s internal policies.

* Created and maintained a wide range of software solutions for several companies such as ( * a segmentation, marketing and asset analysis system, ( * a clinical trials analysis system, ( * a point-of-sale analysis system and ( * a revenue assurance system that recovered over $2 million in billing errors.

Developed the company’s contract, client management, human resource and employee MBO bonus systems using TCL, Microsoft .NET and database technologies.

* Discovered antitrust violations with mergers between media and telecom companies by using the Herfindahl-Hirschman Index on market sheets. * Wrote memos on the regulatory issues regarding the 700Mhz D block.

Developed several software solutions which enabled clients to meet the regulatory requirements of HIPAA and Sarbanes-Oxley Conducted regulatory due diligence on Prudential’s internal policies.

Co-founded a company which created and maintained several mission critical software projects such as a billing system and a 911 non-emergency system for Connecticut, Virginia, and Massachusetts.

* Intellectual property product attorney responsible for 50+ IBM products ranging from Bluemix in IBM Cloud to several products in IBM’s Systems, Internet of Things, Video and Analytics business units. * Worked with business and engineering to make pragmatic decisions regarding legal risk associated with business actions. * Drafted, reviewed and negotiated inbound/outbound agreements ranging from third party/open source/source code licenses to OEM, Joint Developer, reseller, services and confidentiality agreements. * Conducted due diligence for several IBM acquisitions and divestitures as well as drafted/negotiated the agreements controlling said acquisitions and divestitures. * Providing IP support, including IP strategies leading to transaction opportunities, evaluation of in-licensing opportunities, negotiation support, and contract drafting during active transactions. * Managed a docket of over 500 patents.