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Senior IP Paralegal Resume Example

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SENIOR IP PARALEGAL
Professional Summary
Skills
  • Excellent judgment
  • Strong work ethic
  • Excellent judgment
  • Strong work ethic
Work History
06/2014 to Current
Senior IP Paralegal Vedder Price, P.C – New York, New York
  • Document preparation and filing of utility patent, design, and provisional applications; Continuation/Divisional/CIP; formal document preparation; assignment recordation; petitions; continued examination requests; amendments; reissue/re-exam applications; Patent Cooperation Treaty (PCT) applications; PCT US national phase applications; status inquiries; terminal disclaimers.
  • Draft responses to office actions including claim history identifying each claim, any amendments made to claims throughout prosecution as well as any art cited against each claim.
  • Foreign filing deadline reminders.
  • Track PCT national stage and direct national stage deadlines.
  • Information Disclosure Statements.
05/2012 to 06/2014
Patent Paralegal Hoffmann & Baron, LLP – Parsippany, New Jersey
  • Paralegal and Coordinator for Patent Department in IP boutique law firm.
  • Client base include Medical Devices, Computer and Electronic Engineering, and Pharmaceutical Patents.
  • Prepare and file U.S.
  • and foreign patent applications and drawings.
  • Maintain patent portfolios and docketing of all USPTO and global patent documents, including responses to missing parts, preparation of IDS/1449's, drafting of assignments and declarations, amendments in response to office actions and claims rejections.
  • Review and report notices of allowance and issue fee payments, notices of correction of Letters Patents.
  • Foreign filings included drafting PCT transmittals, demands, and National Stage applications.
  • All filings conducted by electronic filing.
  • Draft correspondence and formal reporting letters to clients, inventors, and counsel regarding case status updates.
  • Research and retrieval of new patents and trademarks utilizing various search engines.
04/2010 to 05/2012
Assistant US Patent Administrator Lerner, David, Littenberg, Krumholz & Mentlik, LLP – Westfield, New Jersey
  • Working in US patent prosecution capacity.
  • Maintain USPTO electronic filing, docketing and billing systems.
  • Managed the patent docket utilizing the IP Master docketing program.
  • This included issuing docket reports, responding to docket inquiries firm-wide, and U.S.
  • maintenance fees.
07/2008 to 02/2010
IP Administrator Glenmark Pharmaceuticals – Mahwah, NJ
  • Responsible for day-to-day US-Generics Intellectual Property (IP) legal operations division Manage docketing system in accordance with outside counsel prosecution Liaison between outside counsel and in-house IP colleagues regarding litigation matters Responsible for preparation and dissemination of of quarterly IP budgetary reports within organization Search and obtain scientific references and file histories for NCE compound molecules Prepare and maintain electronic databases for business confidentiality contracts, agreements and licenses for Glenmark and various distributors.
11/2007 to 07/2008
Practice Manager Tso and Associates LLC – Millburn, NJ
  • General responsibility for marketing and development functions of firm's patent practice connected with multinational pharmaceutical, consumer products and biotechnology companies.
  • Oversee filing procedures for foreign patent applications and assist in preparation of patent licenses, confidentiality agreements and consulting agreements.
  • Involved in all aspects of firm's systems management including networking, and establishment of electronic docketing, filing and billing programs.
  • Organize office including development of file system, creation of forms, introducing more productive and efficient methods to replace existing procedures.
10/2002 to 11/2007
Senior Specialist Pfizer Inc – New York, NY
  • Organize, coordinate and assist in providing strategic alliance and project management support to resolve patent-project issues Interface with IP colleagues to provide support for initiatives that impact supportive regional liaison function through alignment of the business and TAs Serve as point of contact for country management and foreign associates to ensure markets are aware of patent portfolios Facilitate communication project process and follow-up to liaison business units for meeting business unit expectations Support global therapeutic area leaders, product attorneys, regional liaisons, and other groups and teams to ensure reliable advice is provided to the business Provide relevant patent expiry and portfolio reports on commercial products to ensure smooth deployments of loss of exclusivity and product information Implement project management tools and practices that help organize, prioritize, track and measure results of project responsibility Manage internal communications and streamline operational support process to enhance efficiency in conjunction with cost savings effectiveness Strategically align with legal business practice groups in project management and project data documentation Manage in-house CLE educational opportunities for company-wide patent attorneys NY-based contact person for organizing educational opportunities for information on patent law changes to patent attorneys.
09/1999 to 10/2002
Patent Legal Assistant BakerBotts LLP – New York, NY
  • Assist in the drafting and filing of all patent applications and prosecution, registration and maintenance documentation including US and PCT Application filings, Responses to Office Actions, Information Disclosure Statements, Formal Drawings, Issue Fees, Petitions, Re-exam proceedings, correspondence.
  • Examine PTO mail, distribution of incoming correspondence to attorneys; prepare deadline calendars and customized lists with reminders to attorneys; prepare special docketing reports for clients; interface with annuity payment service CPI for maintenance fees and annuity payments.
  • Handle correspondence between foreign associates and clients regarding patent prosecution, registration and maintenance.
09/1997 to 09/1999
Legal Assistant Pennie & Edmonds LLP – New York, NY
  • Working in patent prosecution/litigation capacities.
  • Firm's emphasis consisted of intellectual property, patent prosecution, infringement and copyright.
Education
1 2004
M.A:
Seton Hall University - South Orange, NJ
1 1992
B.S: Management Science
 Kean University - NJ
 Management Science
2004
Master of Arts: Theology
 Seton Hall University - South Orange, NJ
Skills
streamline, art, billing, billing systems, consulting, contracts, CPI, Client, clients, databases, documentation, drafting, filing, forms, IDS, IP, law, legal, Letters, litigation, marketing, mail, Office, networking, Notary Public, search engines, organizing, Paralegal, PCT, project management, reporting, Research, scientific, strategic, systems management
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Resume Overview

Companies Worked For:

  • Vedder Price, P.C
  • Hoffmann & Baron, LLP
  • Lerner, David, Littenberg, Krumholz & Mentlik, LLP
  • Glenmark Pharmaceuticals
  • Tso and Associates LLC
  • Pfizer Inc
  • BakerBotts LLP
  • Pennie & Edmonds LLP

School Attended

  • Seton Hall University
  • Kean University

Job Titles Held:

  • Senior IP Paralegal
  • Patent Paralegal
  • Assistant US Patent Administrator
  • IP Administrator
  • Practice Manager
  • Senior Specialist
  • Patent Legal Assistant
  • Legal Assistant

Degrees

  • M.A :
    B.S : Management Science
    Master of Arts : Theology

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