Summary
Overview
Work History
Education
Skills
Software
Certification
References
Timeline
Hi, I’m

Kelly McCoy

Montclair,NJ
Kelly McCoy

Summary

Highly organized and results-oriented Senior IP Paralegal with over 20+ years of experience. Possesses a deep understanding of legal terminology and processes, ensuring compliance and efficiency. Adept at safeguarding confidential client information and maintaining meticulous records. Collaboratively assists legal departments with patent prosecution, offering insightful analysis and meticulous attention to detail. Dependable and adept at juggling multiple priorities, managing teams and maintaining a positive and proactive attitude, while fostering a collaborative and growth-oriented team environments.

Overview

32
years of professional experience
1
Certification

Work History

Messer North America, Inc.
Bridgewater, NJ

Senior IP Paralegal
05.2019 - Current

Job overview

  • Streamlined patent prosecution processes by implementing efficient docketing systems and tracking tools.
  • Enhanced collaboration between legal teams and inventors through proactive communication and coordination of meetings.
  • Coordinated global patent and trademark filings, managing correspondence with foreign associates to maintain compliance with international regulations.
  • Improved organization of IP records by developing a centralized database for easy access to documents and information.
  • Account reconciliation for USPTO Deposit Account
  • 20+ years of experience in patent preparation and prosecution required, with significant knowledge of US, PCT and foreign jurisdiction practice
  • Maintained an up-to-date knowledge of IP laws and regulations, sharing relevant changes with the team for process adjustments.
  • Evaluated invention disclosures, coordinating with inventors to gather necessary information and assess patentability potentials.
  • Developed effective training materials for new paralegals and interns, fostering team growth and knowledge sharing within the department.

Premiere Personnel (Construction Specialities Inc.)
Lebanon, New Jersey

Corporate Paralegal
03.2019 - 05.2019

Job overview

  • Conducted detailed client intakes and entered information into company database.
  • Conducted thorough legal research and analysis, providing valuable insights for case strategy development.
  • Supported the legal department''s efficiency by developing a comprehensive filing system for easy access to crucial documents.
  • Assisted in preparing board resolutions, ensuring proper documentation and compliance with company policies.
  • Coordinated the preparation and filing of annual reports, maintaining regulatory compliance across all jurisdictions.

Nokia Technologies
New Providence, NJ

Sr. Intellectual Property Paralegal (Patents)
07.2014 - 08.2018

Job overview

  • Acted as a first point of contact for new invention disclosures
  • Data enters new submissions into inventor portal and assigns to Technology area leads and case responsibilities.
  • Update CPA with filing decisions of new applications
  • Acts as lead on PCT filings – assigns cases to admins, prepares and reviews paperwork for accuracy and files as needed PCT/National Stage applications for US prosecution
  • Managed large-scale IP due diligence projects during corporate mergers and acquisitions, ensuring smooth transition of assets.
  • Prepare documents and assign to admins for e-filing of Provisionals, Non-Provisionals
  • Docketed and removed office actions for US prosecution utilizing CPA Memotech
  • E-filing Assignments/Declarations and Information Disclosure Statements as needed
  • Traveled internationally to train teams in Global IP Compliance.
  • Acted as back-up support for global Patent Board responsibilities.
  • Enhanced patent portfolio management by streamlining processes and implementing efficient tracking systems.

Pentair Limited/Tyco International
Princeton, NJ

Sr. Intellectual Property Paralegal (Patents & Trademarks)
04.2012 - 10.2013

Job overview

  • Coordinated with over 125 international law firms and managed large global portfolio for domestic and international patents
  • Reviewed documentation and provided instruction to outside counsel (domestic and international) regarding cases
  • Assisted with integration of post-merger procedures
  • Reviewed and amended Merger/Acquisition and technology agreements as needed
  • Created standard operating procedures for training new employees and supervised administrative staff.

Various Firms
New York Metropolitan Region

Senior IP Paralegal
01.2000 - 09.2013

Job overview

  • With over 20+ years of expertise, Kelly has served as a key asset at several private firms in managing the intricacies of a variety of IP portfolios. By providing critical support to attorneys, and ensuring efficient cashflow, Kelly's deep understanding of intellectual property law, combined with exceptional organizational and communication skills has been instrumental in driving success for the vast range of employers she has worked with in the field.

Essex County Municipal & Superior Courts
Newark, NJ

Judicial Suite Legal Clerk
01.1992 - 12.2000

Job overview

  • Kelly's career started in providing critical support to the judicial branches of Essex County's municipal (Newark, NJ) and Superior courts (Essex County). While working in a fast-paced judicial suite environment, Kelly managed a variety of legal and administrative tasks with accuracy and smooth operational efficiency which ultimately taught invaluable insights that helped to navigate career passions to elevate within the legal field.

Education

Fairleigh Dickinson University
Madison, NJ

ABA Accreditation from Paralegal Studies

SCS Business and Technical Institute

American Institute of Banking

Skills

  • IP Training Programs
  • Patent Prosecution
  • PCT Applications
  • Trademark Management
  • Copyright Registration
  • IP Portfolio Management
  • License Agreements
  • Effective Multitasking
  • Accredited Legal Professional
  • Correspondence Writing
  • Client Support

Software

Microsoft Office Suite, Sieble, Serengeti, CPI, CPA

Memotech, Global IP Estimator,Corsearch, IPManage, Coupa

LeCorpio (Anaqua), Sharepoint, IPDAS , IMT, Novum

Inventor Portal, SAP, Salesforce, WestLaw, Concur

Access, Bantec, Patricia

Certification

  • ABA Certified Paralegal (2005)
  • NJ Licensed Notary Public (2017)

References

References available upon request.

Timeline

Senior IP Paralegal

Messer North America, Inc.
05.2019 - Current

Corporate Paralegal

Premiere Personnel (Construction Specialities Inc.)
03.2019 - 05.2019

Sr. Intellectual Property Paralegal (Patents)

Nokia Technologies
07.2014 - 08.2018

Sr. Intellectual Property Paralegal (Patents & Trademarks)

Pentair Limited/Tyco International
04.2012 - 10.2013

Senior IP Paralegal

Various Firms
01.2000 - 09.2013

Judicial Suite Legal Clerk

Essex County Municipal & Superior Courts
01.1992 - 12.2000

Fairleigh Dickinson University

ABA Accreditation from Paralegal Studies

SCS Business and Technical Institute

American Institute of Banking

Kelly McCoy