Contract) Patent Paralegal providing high-level para-professional legal support to in-house attorneys and to external co- counsel representing Sandia Corporation and also contract administrative work of a responsible and confidential nature
to help ensure the smooth functioning of patent legal matters by supporting the Department of Energy (DOE).
Lawrence Berkeley Nat'l Lab (Ronin Staffing) One Cyclotron Road, Berkeley, CA 94720 July to Oct 2018
(Contract) Patent Prosecution Paralegal, providing legal assistance to patent attorneys legal docs for patent filings; doc
research, data analysis; file, report, and track legal docs with various gov't agencies, licensees and clients.
• USPTO patent/fee transmittals for US efilings
• PCT efilings
• Powers of Attorney
• Application Data Sheets and Oaths/ Declarations for U.S. patent filings
• Information Disclosure Statements (IDS's)
• Certifications under 37 CFR 1.976
- Patent Paralegal at Sandia Corporation
- I.P. Legal Admn at Dolby Labs Patent Law Dept
- Patent Paralegal at Vista IP Law Group LLP
- Sr. Patent Paralegal at Vista IP Law Group LLP
3 months at this Job
- Associate of Arts degree - English Literature
- B.A. - English Literature
Specific Duties: Completing application data sheets and preparing and filing new patent applications for foreign and U.S. clients; proofreading and filing corresponding responses and related documents; preparing manual invoices for clients and reporting information thereof; reviewing documents to make sure all pertinent information is accurate and assuring deadlines are met.
- Patent Paralegal at REINHART BOERNER VAN DEUREN P.C
- Legal Assistant at LAW OFFICE OF JIM BLACK & ASSOCIATES
- Tanning Salon Operator/ Manager at JAMIE'S TANFASTIC
5 years, 2 months at this Job
- AA in General Studies - General Communications, Sociology, Sociology
- High School Diploma
Responsible for preparing and filing all necessary documents for US patent applications, including initial filings, Office Actions, Information Disclosure Statements, and issue fees. Approximately 100 new US applications per year. ◆ Instruct and coordinate with foreign associates to file and prosecute foreign patent applications. Approximately 150 new foreign applications/year. ◆ Prepare and obtain declarations and assignments from inventors located in multiple offices and countries ◆ Actively monitor the patent dockets and coordinate with attorneys to ensure all tasks are handled ◆ Integrate all acquisition patent and trademark applications into our current processes (approximately 2 acquisitions/year) ◆ Implement process improvements to increase efficiency, including reducing the need for obtaining paper certified copies, integrating our paper files into a new document management system, creating templates for USPTO forms ◆ Coordinate with internal offices in Japan, Taiwan and Korea to assist with foreign filings and obtaining documents ◆ File US trademark applications, statements of use and responses to office actions ◆ Coordinate with Accounting to process royalty licensing payments
- Patent Paralegal at MOLEX, LLC
- Patent Paralegal at LEYDIG VOIT & MAYER, LTD
- Litigation Paralegal at WALSH, KNIPPEN, KNIGHT & DIAMOND
- SENIOR FLEXONICS - Romeoville, IL at CESSNA AIRCRAFT CO., BOEING CO. and LEARJET CORP
13 years at this Job
- B.S. - Industrial Engineering
Provide legal support to 3 patent agents and 3 attorneys in the filing of new Biotechnology patent applications as well as preparation and prosecution of responses and documents as noted below. Also learned foreign patent prosecution by working with foreign agents to secure documentation necessary for filing and prosecution in other countries. Learned to file PCT applications through PCT Easy. Participated in implementation of new docketing system.
- Patent Paralegal at SYNGENTA BIOTECHNOLOGY INC
- Legal Admin Assistant II at ALSTON & BIRD, LLP
- Legal Administrative Assistant at SMITH ANDERSON
- Intellectual Property Legal Assistant at CIBA-GEIGY CORPORATION
1 year, 4 months at this Job
- Associates - Secretarial Sciences
• Extensive use of DocketTrak docketing software for patent and trademark prosecution
• Portfolio management, document filing and fee payment through private PAIR and MyUSPTO
• Created patent and trademark prosecution files to efficiently organize the office and to enable maintenance of up-to-date hard files
- Patent Paralegal at Kaliko & Associates, LLC
- Patent Paralegal at General Patent Corporation
7 months at this Job
- Certification - Patent Paralegal Studies
- Bachelor's - Business Administration/Management
Senior paralegal responsible for all US and foreign patents, trademarks, docketing and filings.
Prepared all patent and trademark documents for filing with USPTO and PCT filings, and instructed foreign associates for all foreign filings.
• Drafted initial application filings, formal documentation, amendments, and draft responses.
• Corresponded with examiners at USPTO and with foreign associates.
• E-Filed documents with USPTO.
• Conducted weekly docket meetings to discuss USPTO review of all incoming & outgoing correspondence.
• Maintained all Patent & Trademark files using Foundation IP Docket System (FIP) and Computer Packaging (CPA) Annuities. Responsible for entire docket system.
• Coordinated the docketing of all incoming correspondence
• Generated docketing reports.
• Liaison with patent draftsmen, outside counsel, engineers, physicians, and inventors. Additional duties included:
• Responsible for invention disclosures & lab notebooks.
• Prepared educational materials for IP Engineering Lunch and Learn seminars.
• Authored meeting materials for IP Steering Committee meetings.
• Prepared and coordinated all NDA / CDA Agreements. Responsible for physician royalty payments. Responsible for Patent Awards Program for inventors, budgets and complete lists of all IP with pictures of inventions for corporate meetings and bank updates.
- Senior Patent Paralegal & IP Manager at Alphatec Spine, Inc
- Intellectual Property Patent Paralegal at Tucker Ellis & West, LLP
- Intellectual Property Legal Assistant at Snell & Wilmer, LLP
- Intellectual Property Patent Paralegal at Birch Stewart Kolasch & Birch, LLP
8 years at this Job
• Files: o Filing Utility Provisional, Non-Provisional and shell Applications o Filing PCT Applications o Office Action responses o Appeal Briefs o Issue Fee o Preliminary Amendment o Power of Attorney o Request for Continued Examination o Priority Claim o Maintenance Fee o File Reply Notice of Missing Parts o Assignments o Oath o IDS (Creating, filing, reviewing for allowance) o Terminal Disclaimer o Daily Download/Docketing o Other
• Patent Committee Meeting organization and management of IDFs
• Assisting Corporate attorneys with projects outside of the patent prosecution team
- Senior Patent Paralegal at Cypress Semiconductor Corporation (Merger with Spansion LLC)
- Senior Paralegal, Program Manager at Spansion LLC
- Billing Program Manager at Spansion LLC
- Executive Assistant at Spansion LLC
3 years, 10 months at this Job
- Certificate - Patent Paralegal
- Certificate - Paralegal
Manage all aspects of Foreign and Domestic prosecution practice., Primary responsibilities are prosecuting and managing all foreign and international applications for diverse clientele. Prepare and electronically file International Applications, Article 19 and 34 amendments, Demands, direct filing of foreign applications, US 371 applications, Foreign National Phase applications, European Patent Validations; Provide cost and spending projections for clients, prepare client monthly docket reports and special projects (as needed) for clients. Review deadlines; review and implement actions on docket to staff and attorneys; review and edit all invoices for payment. Primary responsibilities also include directing and managing junior paralegals in duties, reviewing and approving invoices, managing overflow work, organizing, and managing and directing bi-monthly IP Department meetings for the New York and Washington Office of Andrews Kurth LLP. In particular I prepare Agendas, organize topics for discussion, and implement, manage and direct all actions agreed upon during the meetings. Second responsibilities include filing US and foreign amendment/responses to Office Actions, RCEs/Notice of Appeals, responses to missing parts/requirements, Appeal Briefs, and Issue fee transmittals, prepare and file Information Disclosure Statements, U.S. Non-Provisional, CIP, U.S. Divisional applications, and Provisional Patent Applications.
- Senior IP Patent Paralegal at Andrews Kurth LLP
- IP Patent Paralegal at Dorsey & Whitney LLP
- Legal Assistant at MeadWestvaco Corporation
5 years at this Job
- Diploma - Paralegal Studies
- Bachelor of Science - Mechanical Engineering
- Bachelor of Science
• Prosecute US and foreign applications throughout all phases of prosecution from filing to grant.
• Monitor case activity and deadlines through Inprotech, FIP and CPI databases and the USPTO website.
• Report out notifications, procedures, and deadlines to clients for all matters.
• Assist attorney(s)/agent(s) in drafting and editing prosecution documents for filing at the USPTO and foreign patent offices.
• Resolve issues related to the prosecution of patent applications including but not limited to chain of title, inventorship, name changes and responding to Office Actions.
• Prepare substantive shells for US Office Actions, Restriction Requirements, and Petitions for Reconsideration
• Prepare Information Disclosure Statements;
• Routinely conduct research on filing information for various countries i.e. necessity of foreign filing licenses, working requirements, upcoming changes to rules and regulations to the PCT and foreign patent offices; patentability requirements, regional requirements for granting a patent, and local regulations regarding examination and disclosure.
• Prepare and file 371 U.S. National Phase Applications and associated paperwork.
• Act as intermediary between clients, foreign associates, and attorneys to prosecute applications from filing through grant.
- Patent Paralegal/Specialist at Faegre Baker Daniels LLP
- Independent Contract Patent Paralegal at United States Patent and Trademark Office
- Owner/ Operator at CALVIN MANAGEMENT, INC
- Senior Patent Prosecution Paralegal at HOLLAND AND HART
5 years, 6 months at this Job
- Certificate of Completion - General Course on Intellectual Property offered
- Certificate of Completion - Intellectual Property Studies
- Bachelor of Arts in Political Science - Political Science
Manage Foreign and European patent dockets and work with attorneys to handle deadlines. Prepare, file and docket PCT applications and National Phase Applications. Advise management on systems and updates to systems that will best serve our practice. Prepare and file European Patent Applications, office actions and Opposition filings working directly with our in house counsel to handle all phases of European patent prosecution. Prepare and file requests to record changes in title, including assignments, mergers and name changes. Correspond with foreign associates on deadlines and prosecution of pending applications. Communicate with clients to obtain information for filing applications and prosecution requirements.
- Senior Patent Paralegal at HALEY GUILIANO LLP
- Senior Patent Paralegal at ROPES & GRAY LLP
- Patent Paralegal at GREENBERG TRAURIG, LLP
- Case Manager/Patent Paralegal at FISH AND RICHARDSON
2 years at this Job
- Bachelor of Arts - Psychology/English