JOANNE M. VARANELLI
Harwinton,USA
Summary
Efficient and reliable Intellectual Property Law Administrator | Patent/Trademark Paralegal with over 25 years of paralegal experience collectively, and more specifically 23 years specializing in US and Foreign IP Prosecution. Key strengths include professionalism, confidentiality, strong work ethic, and keen attention to detail. A self-starter capable of working independently with minimal supervision, while also adaptable to high-demand situations, including working outside normal business hours when required
Overview
2026
2026
years of professional experience
Work History
Sr. IP Paralegal
W.R. Grace Co.
11.2002 - Current
- Liaison with outside Patent and Trademark Counsel for Prosecution of IP Portfolio
- Collaborated with in-house attorneys to review U.S
- And foreign office actions, delegating to inventors for further review when necessary
- Led an in-house IP team to onboard foreign agents, enabling the company to handle all foreign prosecutions internally, resulting in significant cost savings
- Prepare Assignments and US Inventor Declarations for Inventor’s execution
- Responsible for ensuring that all inventors have properly Assigned their rights to Company
- Maintained Docket Database - CPI
- Compiled and analyzed IP data to prepare bi-annual reports for Patent Review Committee Meetings, supporting informed decision-making on patent filings and portfolio management
- Analyzed multiple external trademark renewal vendors to identify cost-saving opportunities and optimize trademark renewal expenses
- Discuss and review the Trademark Intake Form with the business team and in-house attorneys when considering a new trademark filing. Conduct preliminary knockout searches using Corsearch before submission to trademark counsel. Coordinate with outside trademark counsel and businesses to gather required formal documents and specimens for trademark filings and renewals, as applicable.
- Manage Patent Maintenance Fees as well as Trademark Renewals
- Maintain integrity of all electronic case files
IP Administrator | Patent Paralegal
Expro North Sea Limited
02.2007 - 12.2021
- Company Overview: Through US subsidiary, Expro Americas, LLC
- Manage all aspects of worldwide diverse IP Portfolio, coordinating patent and trademark prosecution with external counsel (US/UK and all Foreign Agents)
- Manage and responsibly for all Patent Maintenance Fees as well as Trademark Renewal Fee and within US Section 8 - Declaration of Use along with specimen submission
- Initiated and established internal processes for submission of new ideas for consideration of patent application filing, assist in creating a Front-End Innovation Process
- Manage IP Inventor financial reward scheme
- Initiated and assisted IT with the creation of IP database on Company Internal Portal for invention submission and review
- Support Merger & Acquisition activity – coordination and review of target Acquisition companies IP
- 2008 Integrated portfolio of IP and all aspects from legacy company merger/acquisitions (CiDRA Corporation)
- 2018 Integrated IP Portfolio of external company acquisition into single unified Expro database (Quality Intervention – Norway)
- Supported IP activity and transfer of IP with sale of Power Chokes in November 2019
- Conduct preliminary Trademark/Service Mark searches using WIPO Global Brand Database along with TM View utilizing US Trademark ID Manual to establish class of goods/services for search
- Maintain integrity of all hard copy case files as well as electronic case files
- Through US subsidiary, Expro Americas, LLC
Patent Paralegal
Expro North Sea Limited
- Company Overview: Through US subsidiary, Expro Americas, LLC
- Assist in patent application preparation, including drafting and filing formal documents electronically for both U.S
- And PCT applications
- Independently prepare assignments, declarations, powers of attorney, and recordation of assignments
- Manage the preparation of formal transmittal documents for the U.S
- Patent Office and draft reporting letters to internal clients regarding application status
- Receive, review and manage all incoming U.S
- And foreign office actions/examination reports from outside counsel
- Handle applicable office action/examination reports in-house and provide instructions to U.S
- Or foreign agents on next steps
- When necessary, direct agents to prepare draft responses for in-house review; ensure all due dates are met with limited extension taken to control costs
- Responsible for all aspects of PCT as well as foreign filings
- Schedule, prepare for, and attend monthly Patent Committee Meetings
- Collaborate with committee members to determine courses of action for upcoming deadlines and U.S
- And foreign patent decisions
- Through US subsidiary, Expro Americas, LLC
Education
Paralegal Studies
Naugatuck Valley Community College
Waterbury, CTExecutive Administration
Porter & Chester Instsitute
Waterbury, CT01-1985
Skills
- Prioritization of Deadlines
- Intellectual property law
- Document Organization
- Proficient Client Correspondence
- Microsoft Office Suite
- Problem-solving abilities
- Effective Task Management
- Effective Team Collaboration
- Calendar management
- Meticulous Attention to Detail
- Effective multitasking
- Data confidentiality
- Timely Deadline Oversight
- Consistent Dependability
- Effective Time Management
Work Availability
monday
tuesday
wednesday
thursday
friday
saturday
sunday
morning
afternoon
evening
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Timeline
IP Administrator | Patent Paralegal
Expro North Sea Limited
02.2007 - 12.2021
Sr. IP Paralegal
W.R. Grace Co.
11.2002 - Current
Patent Paralegal
Expro North Sea Limited
Paralegal Studies
Naugatuck Valley Community College
Executive Administration
Porter & Chester Instsitute
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