Tad Prizant
Summary
Goal-oriented Intellectual Property Paralegal motivated to continually improve and enhance intellectual property skillset and personal skills to attain increased responsibility and opportunities for professional growth.
Results-driven professional skilled in researching legal case information and preparing necessary correspondence with strong understanding of legal terminology and processes. Adept in maintaining confidential records and client information.
Detail-oriented team player with strong organizational skills. Ability to handle multiple projects simultaneously with a high degree of accuracy.
Overview
28
28
years of professional experience
Work History
Senior Intellectual Property Paralegal
Rimon, P.C.
06.2017 - 09.2023
- Manage internal IP Management Software, IPfolio, including implementation of several workflow enhancements for both patent and trademark processes
- Drafting, reviewing, and finalizing IP Licensing Agreements
- 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 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
- 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
Paralegal Contractor - Self Employed
05.2007 - 06.2017
- Managed implementation of new IP Management Software, 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 attorneys
- Provided support to local 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
- Drafted Non-Disclosure Agreements
- 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 PCT filings and office action responses
- Audited patent families, prepared and submitted Information Disclosure Statements
- Comprehensive working knowledge of USPTO Legal Framework, Global Dossier, EFS-Web, EPAS, AOTW-P, PAIR, TEAS, Lotus Notes 9, iManage Inprotech, Microsoft Office 365, Visio 2013 and Adobe Acrobat DC
- Drafted IP Licensing Agreement for outside counsel
Senior IP Paralegal
Greenberg Traurig, LLP
03.2006 - 05.2007
- Prepared numerous USPTO forms for provisional, US non-provisional, PCT and US national phase filings
- Draft initial IP Licensing Agreements
- 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
- Maintained docket database and managed deadlines for US and foreign patent portfolio
- Proficient in Internet Explorer 11, Microsoft Office, including Word, Excel, PowerPoint, OneNote, Outlook, and Adobe Acrobat
Intellectual Property Paralegal
Flicker & Kerin, LLP
03.2002 - 03.2006
- 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
- Draft IP Licensing agreements and monitor database for license users
Intellectual Property Paralegal (in-house)
Calpine Corporation
05.2001 - 03.2002
- Preparation and filing of trademark registration applications
- Preparation and filing of statement of use
- Preparation of extension request for pending Office Actions
- Draft affidavits of use and incontestability
- Preparation and filing of trademark renewal applications
- Prepared quarterly federal and state payroll tax returns
- Analysis, preparation, and response to notices from USPTO
- Draft IP Licensing agreements
- Draft corporate governance documents for newly formed subsidiaries
Corporate and IP Paralegal
Pillsbury Madison & Sutro, LLP
01.1996 - 08.1999
- 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
- Draft and coordinate proxy materials and annual reports with transfer agent and distributor
- Prepare miscellaneous other SEC filings, including Section 16 Forms 3, 4 & 5, and any amendments thereto
- Research international corporate issues and work with foreign agents to handle all foreign corporate governance responsibilities
- Assist intellectual property attorneys with organization and compliance issues relating to both domestic and international trademark filings
- Draft merger agreements, stock purchase agreements, and asset purchase agreements
- Draft confidentiality agreements (NDA)
Education
BBA - Business Administration And Management
University of Phoenix
San Jose, CAParalegal Certificate -
NRI Institute of Paralegal Studies
Washington D.C.Certified Westlaw Paralegal -
Westlaw Continuing Education
Notary Public -
National Notary Association
Chatsworth, CASkills
- 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
- Panelist at IPfolio's IPforward Conference, "Frontiers in Invention Capture and Management" held on April 11, 2018
- Managed large data migration and implementation of Intellectual Property Management Solution, Greenberg Traurig, LLP
- Renewed all Trademarks of the music group "The Beastie Boys", RIMON, P.C.
- Participant in USPTO Roundtable, "Importing Prior Art Automatically and Streamlining Patent Issuance" held on September 28, 2016
- Renewed all Trademarks for the music artist "Michelle Shocked", RIMON, P.C.
- Collaborated with team of 20 in the resolution of IP infringement of music artist Steve Perry, RIMON, P.C.
- Resolved IP licensing matters by collaborating with social media platforms including facebook, X (formerly twitter) & instagram , RIMON, P.C.
Affiliations
- Notary Public
- Westlaw
- Lexis
Timeline
Senior Intellectual Property Paralegal
Rimon, P.C.
06.2017 - 09.2023
Intellectual Property Paralegal
Paralegal Contractor - Self Employed
05.2007 - 06.2017
Senior IP Paralegal
Greenberg Traurig, LLP
03.2006 - 05.2007
Intellectual Property Paralegal
Flicker & Kerin, LLP
03.2002 - 03.2006
Intellectual Property Paralegal (in-house)
Calpine Corporation
05.2001 - 03.2002
Corporate and IP Paralegal
Pillsbury Madison & Sutro, LLP
01.1996 - 08.1999
BBA - Business Administration And Management
University of Phoenix
Paralegal Certificate -
NRI Institute of Paralegal Studies
Certified Westlaw Paralegal -
Westlaw Continuing Education
Notary Public -
National Notary Association
Similar Profiles
Nimrod Shoval ShremNimrod Shoval Shrem
Technical Support Representative at Rimon School Of MusicTechnical Support Representative at Rimon School Of Music
Lynsey RiceLynsey Rice
Preschool Teacher's Assistant at Jewish Community Center Gan RimonPreschool Teacher's Assistant at Jewish Community Center Gan Rimon
Asuncion GomezAsuncion Gomez
Casual Kitchen Hand at Rimon CateringCasual Kitchen Hand at Rimon Catering
null null
Senior Intellectual Property Paralegal at Akebia Therapeutics, Inc.Senior Intellectual Property Paralegal at Akebia Therapeutics, Inc.
Kristina BarrKristina Barr
Senior Paralegal at Latham & WatkinsSenior Paralegal at Latham & Watkins