Your Name
Summary
Enthusiastic Intellectual Property Paralegal motivated to continually improve and enhance intellectual property skillset and personal skills to attain increased responsibility and opportunities for professional growth.
Overview
35
35
years of professional experience
Work History
Senior Intellectual Property Paralegal
Akebia Therapeutics, Inc.
Cambridge, MA
09.2017 - Current
- Manage internal IP Management Software, IPfolio, including implementation of several workflow enhancements for both patent and trademark processes
- Routinely audit IP management database to ensure data accuracy and integrity
- Manage invention harvesting process to identify and capture inventions from global inventors
- Manage Global IP budget of $1.5 million for patent prosecution, patent maintenance, trademark filings, trademark maintenance and trademark litigation
- Collaborate with global marketing and SalesOps to obtain evidence in trademark conflicts such as oppositions, cancellations and infringements
- Review product information to identify and collect specimens of use for global trademark portfolio
- Manage internal electronic signature process for all IP documents
- Manage workflows for domestic and foreign outside counsel for patent and trademark portfolios including monthly status and docket review meetings
- Provide employees with patent and trademark resources as needed and identify process improvements
- Manage patent awards including award payments and milestone hexagon stackable patent awards
- Comprehensive working knowledge of IPfolio, SimpleLegal, CounselGO, Foundation IP, USPTO Legal Framework, Global Dossier, EFS-Web, PAIR, TESS, TEAS, TSDR, Outlook, Word, Excel, PowerPoint, OneNote, Salesforce, Adobe Acrobat DC, Adobe Sign, Teams, Zoom and Skype
Intellectual Property Paralegal
Womble Bond Dickinson
Houston, TX
06.2014 - 09.2017
- Managed implementation of new IP Management Software, Lecorpio, including migration of legacy data from CPi in 2015; managed ongoing data clean up and provided training as required to outside counsel
- Developed new customizations for more operationally efficient docketing workflows and further enhanced existing configurations to accommodate ongoing changes in business strategy for IP
- Provided support to Waters inventors on a daily basis, i.e. generated inventor portfolio reports, provided notary assistance on inventor documents and facilitated initial invention disclosure meetings
- Processed invention disclosure submissions and recorded pertinent information such as technology area, project, product, third party involvement, planned public disclosure date and ratings for commercial value, complexity and technical merit
- Prepared quarterly spreadsheets for eligible patent awards for first filings and granted US patents
- Worked collaboratively with numerous patent and trademark outside counsel, both domestic and international, to ensure timely completed deadlines for both in-house and outside prosecution
- Prepared patent prosecution filings for US and foreign applications, such as non-provisional and provisional applications, preliminary amendments, formal papers, PCT filings, office action responses, etc.
- Audited patent families, prepared and submitted Information Disclosure Statements
- Managed annuity payments, including preparation of annuity spreadsheets, provided follow-up action items when necessary, communicated hold/drop decisions to annuity payment provider and reconciled complex monthly statements to ensure accuracy
- Organized IP Team meetings and Legal Professional Staff meetings and provided suggested meeting agendas
- Comprehensive working knowledge of USPTO Legal Framework, Global Dossier, EFS-Web, EPAS, AOTW-P, PAIR, TEAS, Lotus Notes 9, iManage DeskSite, Access, CPi Annuity Management System, Inprotech, Microsoft Office 2010, Visio 2013 and Adobe Acrobat DC
- Served as a mentor to a temporary intern hired to assist with various projects within Legal
Patent Assistant/Patent Invoice Manager
California Teachers Association
Burlingamenatomasontarionorco, CA
05.2011 - 02.2014
- Prepared numerous USPTO forms for provisional, US non-provisional, PCT and US national phase filings
- Timely processed European validation instructions directly with foreign associates along with required documentation
- Input/generated sequence listings for patent applications containing modified amino acid sequences
- Determined patent term adjustment periods and cross-checked with USPTO PTA records
- Reviewed granted US patents for accuracy and prepared certificates of correction if required
- Maintained collaborator patent files in accordance with signed contracts/license agreements
- Coordinated, organized and disseminated materials necessary for patent committee meetings with outside collaborators
- Justified and input all patent-related invoices for cost-tracking and budgetary purposes
- Processed foreign annuity statements with third party annuity management service, CPA Global
- Maintained and reconciled USPTO Deposit Account including refund requests when necessary
- Maintained docket database and managed deadlines for US and foreign patent portfolio
- Proficient in CPA Global/Memotech, Internet Explorer 11, Microsoft Office 2013 including Word, Excel, PowerPoint, OneNote, Outlook and Lync applications, Adobe Acrobat and PatentIn
Confidential Assistant
State Of Colorado
Denver, CO
09.2006 - 09.2009
- Provided executive assistance to City Solicitor by performing advanced, diversified and highly confidential duties requiring broad and comprehensive experience, skill and knowledge of organization policies and procedures
- Interacted with civil leaders at all levels
- Facilitated and managed philanthropy efforts on behalf of the City of Providence
Patent Secretary
City Of San Antonio, Tx
San Antonio, TX
08.1993 - 05.2002
- Trained employees on office procedures and computer skills
- Drafted patent and trademark prosecution, such as initial filings and a variety of prosecution documents
- Maintained attorney dockets containing important deadlines and tasks
- Managed firm\'s deposit account held with the USPTO
- Proofread firm\'s granted patents and drafted certificates of correction as needed
- Organized patentability searches and drafted letters reporting same to clients
Office Manager
James P. Redding & Associates
City, STATE
01.1993 - 08.1993
- Reconciled general and escrow checking accounts
- Maintained accounts payable and receivable records
- Handled payroll for employees of small office, including all federal and state deductions
- Prepared quarterly federal and state payroll tax returns
Legal Secretary
Goldenberg & Muri
City, STATE
09.1989 - 12.1992
- Drafted articles of incorporation and minutes for several corporate clients
- Researched state statutes, decisions, legal articles, codes and documents
- Hand delivered various corporate filings to the Office of the Secretary of State
- Assisted real estate attorneys in numerous corporate and residential closings
Education
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Katharine Gibbs School
Providence, RIundefined
Smithfield High School
Smithfield, RISkills
- Well-developed sense of focus with strong organizational skills and meticulous attention to accuracy and detail
- Solution and results oriented and highly successful in identifying opportunities to develop new processes and/or infrastructure to assist in reducing costs and increasing overall efficiency
- Highly adaptable team player and able to effectively prioritize in a high pressure environment
- Excellent written and verbal communication skills
- Strong critical thinking, interpretive and problem solving skills
- Exceptional interpersonal skills including the ability to collaborate with colleagues at all levels
- Excellent knowledge of patent and trademark law and related procedures, including USPTO, WIPO and the EPO
- Solid understanding of complexities of intellectual property business relationships, ie, inventors, co-owners, assignees, licensees, foreign associates and other counsel
- Exceptional knowledge of "Duty of Disclosure" and use of Global Dossier to examine foreign counterpart applications and review citation data
Accomplishments
- Keynote speaker and discussion moderator at IPforward Dinner & Discussion in Boston, "Invention Capture & Management from an In-house Perspective" held on April 25, 2018
- Co-Presenter at IPfolio User Group Meeting, "Customer Best Practices, Tips & Tricks including Inventor Portal" held on April 10, 2018
- Panelist at IPfolio's IPforward Conference, "Frontiers in Invention Capture and Management" held on April 11, 2018
- Managed large data migration and implementation of new in-house Intellectual Property Management Solution, Lecorpio
- Panelist on Lecorpio's Webinar, "Encouraging Adoption of IP Management Across the Enterprise" held on February 16, 2017
- Participant in USPTO Roundtable, "Importing Prior Art Automatically and Streamlining Patent Issuance" held on September 28, 2016
- 2013 Ipsen Simplification Award Top 12 Finalist for "IP Direct Pay Foreign Invoicing and Electronic Approval" simplification initiative that resulted in freeing up company resources
Affiliations
- Notary Public (Commission Expires May 19, 2019)
- Women in the Enterprise of Science & Technology
- Boston Patent Law Association
Timeline
Senior Intellectual Property Paralegal
Akebia Therapeutics, Inc.
09.2017 - Current
Intellectual Property Paralegal
Womble Bond Dickinson
06.2014 - 09.2017
Patent Assistant/Patent Invoice Manager
California Teachers Association
05.2011 - 02.2014
Confidential Assistant
State Of Colorado
09.2006 - 09.2009
Patent Secretary
City Of San Antonio, Tx
08.1993 - 05.2002
Office Manager
James P. Redding & Associates
01.1993 - 08.1993
Legal Secretary
Goldenberg & Muri
09.1989 - 12.1992
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Katharine Gibbs School
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Smithfield High School
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