Well qualified Legal Assistant/Paralegal with over twenty years of broad experience in the intellectual property field with small and large law firms. Possesses exceptional multi-tasking and strong interpersonal and communication skills, coupled with the ability to prioritize and complete assignments independently, efficiently and accurately in a demanding environment. Highly organized and self motivated professional with a solid knowledge of trademark prosecution and intellectual property litigation. Hard working self-starter committed to superior client and attorney service.
Remotely assist Owner and Managing Partner of this Intellectual Property boutique as a Paralegal/ Legal Assistant, billing time handling both domestic and foreign trademark prosecution, including new Madrid Protocol filings and renewals.
Assisted one partner and two associate attorneys in the Intellectual Property Group as a Trademark Prosecution Coordinator/Legal Assistant, handling both foreign and domestic trademark prosecution.
Maintain domestic and international trademark/service mark, copyright, and domain name files; monitor the attorney dockets, work closely with and promptly advise the Docketing Assistants when there are any changes in due dates and clients' trademark portfolios; send routine reporting and reminder letters to clients on a timely basis; proofreading, copying and mailing documents as needed; prepare e-faxes, emails; perform pre-clearance “knock-out” searches to confirm potential availability of clients' proposed new trademark / service mark; prepare and electronically/manually file domestic trademark applications and related correspondence; gather evidence in support of in-use applications; secure necessary signature/authorizations and approved documentation for domestic and foreign trademark applications, Statements/Declarations of Use, Section 8 & 15s, renewals and any other purpose; prepare and file, through foreign counsel, foreign trademark applications and prepare and attend to Powers of Attorney and necessary legalizations; prepare follow-up and status check correspondence and email
Provide support for Trademark Trial and Appeal Board opposition and cancellation proceedings and appeals
Prepare trademark related cost estimates and create inventory and due date reports as needed for attorneys and external clients in Word, Excel and other IP management and docketing software
Prepare and electronically file copyright applications
Assist with domain name related matters
Prepare and process new client documents, as well as transferred portfolios to firm, and assist in coordinating notification to foreign counsel
Provide remote assistance to Houston personnel with trademark matters as needed
Meet with, phone or email the attorneys daily to verify projects, appointments and priorities for the day; check the attorneys' calendar daily and update or make inquiries as necessary; maintain and update attorney task list and deadlines in Outlook and ensure the attorneys are aware of deadlines
Enter Partner's hours in the timekeeping (Carpe Diem) system on a consistent and timely basis; prepare expense reports; requests for reimbursement, including compiling appropriate documentation
Supported intellectual property partner in litigation, trademark/service mark applications and prosecution, licensing and other contract matters.
Litigation – created and maintained trail books, pleading books, case files and correspondence; prepared contact sheets for all cases; created and updated case calendars based on scheduling orders; assisted in and coordinated document productions; organized and created notebooks for materials provided to expert witnesses
Trademark/Service Mark Prosecution – electronically/manually prepared trademark/service mark applications and related correspondence; gathered specimens in support of in-use applications; prepared Statements of Use, as well as maintenance documents, including Section 8 & 15 declarations and renewal documents
Contract Matters – supported creation of extensive form files for patent and technology license agreements, joint development agreements and confidentiality agreements
Speeches/Presentations – supported preparation of three chapters in a book for a course on Designing Around Valid U.S. Patents; obtained and verified case citations; researched Federal Circuit Daily Log of new case opinions and updated collection of pertinent cases; coordinated travel arrangements to and from course locations
General and Administrative – maintained general research and form files; sensitively handled partner's confidential business and personal matters; as needed, assisted other members of the IP team, including two associate attorneys and paralegals, with transcribing and revising patent applications, responses to office actions, declarations, powers of attorney, assignments, IDSs and client correspondence
Strong administrative experience, with a minimum of 20 years of legal and intellectual property secretarial work; ability to work efficiently, proactively, take initiative, execute instructions, prioritize work and be a team player
A clear understanding of trademark prosecution processes and principles, and willingness and ability to continuously develop this understanding; willingness to read and review relevant documents to develop a thorough understanding of the cases
Proficient with Microsoft Office systems, especially WORD and Outlook, with basic knowledge of Excel; experience with document and IP management/docketing software, and timekeeping software, as well as various online research tools
Hummingbird ▪ FileSite ▪ CPA Inprotech ▪ IPDAS ▪ Global IP Estimator ▪ Interaction ▪ Carpe Diem ▪ Wolters Kluwer/IP Law ▪ INTA ▪ USPTO (TEAS) and the Library of Congress Electronic Filing portals ▪ TESS, TSDR, TTAB and PAIR
Completed 1.5 yrs of 2 yr course
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