Patent Paralegal with 10+ years in patent prosecution, including PCT filings and IP portfolio management. Proficient in patent search databases and law firm software.
Overview
24
24
years of professional experience
Work History
Patent Paralegal
Cantor Colburn LLP
08.2016 - 03.2024
Coordinated international filings, liaise with attorneys, client and foreign associates and manage entire international patent portfolios, Monitored Dockets and their critical deadlines
Prepare and filed PCT applications and related prosecution documents
Prepared and filed National Phase and Direct National Filings in countries overseas
Reviewed and managed clients international patent docket in its entirety
Prepared all formal documentation, certification and legalization
Researched and retrieved information utilizing United States Patent and Trademark Office website, Foreign Patent Office websites, worldwide resources
Maintained electronic files in prosecution management database
Coordinated and performed diverse range of services required to accomplish client objectives and satisfy Firm's responsibilities to client(s)
Reported to client(s) Office Actions, Response to Notification of Missing Requirements, Preliminary Amendments, Information Disclosure Statements, Issue Fee/Publication payments, Declarations, Assignments, Request for Certified Priority Documents, Request for Corrected Filing Receipt, etc.)
Collaborated with clients to identify, establish, and maintain data integrity, processes, and applicable databases that support client and Firm objectives
Summarized and analyzed cited references for particular relevance
Worked extensively with attorneys to maintain their preferred timeline for responding to outstanding actions
Maintained integrity of electronic data relating to clients' intellectual property by firm policy and procedures
Guided, trained, mentored, and was a resource to others.
Patent Paralegal
St. Onge Steward Johnston & Reens LLC
01.2016 - 08.2016
Filed US applications, Responses, Amendments, Assignments, IDS's and all other actions online by EFS (Electronic Filing System) Established and maintained patent files, open files, prepared documents for filing with USPTO including, Patent Applications, Preliminary Amendments, Information Disclosure Statements, Responses to Missing Parts, Assignments, RCE's, Notice of Allowance, Appeals, and payments of Issue Fees
Reviewed all incoming correspondence from U.S Patent and Trademark Office and foreign associates for essential docketing; maintained and updated docketing and deadline calendars, conducted online research, cleared dockets
Entered time for attorneys, process monthly invoices, prepare expense reports
Maintained verbal and written communication with attorneys and clients and foreign associates.
Legal Consulting
Kelly Services
01.2012 - 12.2015
Short-term and long-term legal and non-legal assignments throughout Connecticut
Collaborated closely with paralegals and attorneys to ensure timely completion of tasks related to case management.
Patent Paralegal
Harrington & Smith Attorneys At Law LLP
07.2008 - 10.2012
Prepared all documentation for the filing of Patent applications and their prosecution (for ex
Drafting documents for filing of Provisional, Utility, National Phase, Foreign and PCT applications, drafting Requests for Continued Examination’s and Extensions of time, Drafting Response to Office Actions, Response to Notification of Missing Requirements, Preliminary Amendments, Information Disclosure Statements, Issue Fee/Publication payments, Declarations, Assignments, Request for Certified Priority Documents, Request for Corrected Filing Receipt, etc.)
Coordinated international filings with foreign law firms and other foreign entities; preparing status summary reports for attorneys and clients; and performing online searches of U.S
Patent
Contacted the Office of Initial Patent Examination to inquire about the status of applications
Filed all applications, responses, amendments, assignments, IDS's and all other actions online by EFS (Electronic Filing System)
Updated application status either by looking in PAIR or following up with examiners
Downloaded US patents and foreign patents from internet websites reporting all documentation received from the USPTO to clients (ex
Filing Receipts and Notice of Acceptance, Notification of Missing Requirements, Notice of Publication, Office Actions, Notice of Allowance, Patent Issuance, etc.)
Followed-up with clients regarding upcoming deadlines and missing requirements.
National AERS Learning Administrator
Deloitte & Touche
11.2004 - 04.2008
Developed and oversaw the process of obtaining learning level updates, and using them to update appropriate systems Reported periodically on the Learning Level compliance by region; broke up the report and followed up with regional learning sr
Managers
Coordinated learning seminars for new hire manager to experience managers
Ensured Deloitte Learning center is updated with all the current learning materials
Edited memos for the Deloitte Learning Team
Provided overall evaluations to facilitator who teaches the Deloitte Seminars Replied to correspondence regarding Deloitte seminars
Coordinated with meeting planners to ensure facilitators and participants had the appropriate teaching/learning tools available
Communicated updates and or changes to the different seminar facilitators
Conducted various researches on regional learning directors.
Paralegal
Oxford Health Plans Inc.
05.2004 - 10.2004
Provided support to two attorneys
Assisted with management of litigation cases
Assisted in handling large projects including document organization and retrievals
Prepared binders for depositions.
Patent /Trademark Paralegal
General Electric Company
10.1999 - 03.2004
Provided direct support to four attorneys
Acted as the liaison of Trademark and Patent between International agents and attorneys
Obtained and maintained merger agreements to ensure maintenance of GE Trademarks and Patents Conducted online searches for availability of trademarks
Handled US and foreign trademark renewals
Processed trademark mail and docketing ran reports and assisted in maintaining the trademark database
Opened new patent cases; gathered all necessary documents for foreign filing
Assisted in managing General Electric Submitted Ideas Program Provided oversight and guidance to customers who utilized Submitted Ideas Website; handled high volume of calls
Education
Certificate Paralegal Litigation -
University of Connecticut
Stamford, CT
01.2002
Associate Degree: Computer Networking and Administration -
CLC
Alexandria, VA
01.1999
Skills
MS Office proficient
Netscape
Adobe Photoshop
Outlook
CPI
IPT
Timeslips
Aim
Daily docket reports and docketing
Patent prosecution domestic and foreign
Conduct legal research
Database management
Office management
Timeline
Patent Paralegal
Cantor Colburn LLP
08.2016 - 03.2024
Patent Paralegal
St. Onge Steward Johnston & Reens LLC
01.2016 - 08.2016
Legal Consulting
Kelly Services
01.2012 - 12.2015
Patent Paralegal
Harrington & Smith Attorneys At Law LLP
07.2008 - 10.2012
National AERS Learning Administrator
Deloitte & Touche
11.2004 - 04.2008
Paralegal
Oxford Health Plans Inc.
05.2004 - 10.2004
Patent /Trademark Paralegal
General Electric Company
10.1999 - 03.2004
Certificate Paralegal Litigation -
University of Connecticut
Associate Degree: Computer Networking and Administration -
CLC
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