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0-5 years of experience
Managed the Corporation’s domestic and foreign trademark and patent portfolio consisting of 950 trademark (US and foreign) registrations and 50 patents.
- Prepared trademark and patent applications and registrations for the Corporation, with particular emphasis in engineered materials, natural resources and technology-based services.
- Consulted with clients (various business sectors) to protect the intellectual property rights of their inventions in the US, and all participating countries of the PCT.
- Monitored up-coming due dates for all pending applications during each phases of prosecution.
- Performed preliminary trademark “knock-out” searches using electronic and online search tools.
- Prepared and filed patent applications, Declarations, POA’s.
- Processed responses to Office Actions, IDS, Notice of Allowance, Issue Fee’s, and corresponded with foreign associates to pay all maintenance fee’s.
0-5 years of experience
Supported Junior Partner and Senior Associate of Patent Prosecution Department
- Organized and researched foreign and domestic patent applications as well as the analysis of document recordation; RCE and PCT demands, requests and related legal documents
- Drafted and proofread petitions, notices, amendments, declarations and assignments to applicants
- Opened and acknowledged new dockets, processed patent applications, family patents, expirations and pended litigations
- Reported and followed up with letters and debit notes to clients
- Conducted on-line patent searches
- Managed administrative tasks such as email correspondence, calendar management and attorney time entry
0-5 years of experience
Managed trademark portfolios for various pharmaceutical, electronic, and other fortune 500 companies
- Researched trademark laws and patent laws nationally and internationally
- Utilized specialized software for docketing of trademark receipts and other trademark maintenance
- Managed all accounting for trademark department
- Facilitated communication between domestic and foreign clients, agents, attorneys and trademark offices
- Researched and resolved issues that jeopardized the integrity of trademark preservation
- Reviewed and interpreted legal documents and new laws both nationally and internationally
- Responsibilities included performing discrepancy reports for outstanding deliverables from the clients and the trademark agents
6-10 years of experience
- Authored and implemented benchmarked best practices for IP docketing and e-billing to increase productivity and efficiency
- Member of new software selection committee studied then presented several solutions for IP
- Law firm convergence project that reduced outside counsel cost by 20%
- Identified targets for patent and trademark licenses and technology transfer agreements lead the client engagement to draft the Licenses and Agreements
- Repaired significant gaps in trademark rights; communicated a plan to repair said gaps to senior leadership; the plan received funding of $450K in a down economy
0-5 years of experience
Provided support to four intellectual property attorneys in trademark prosecution and maintenance.
- Prepared and filed U.S. and international trademark applications, renewal applications, affidavits of use and incontestability, powers of attorney and responses to office actions.
- Maintained clients’ domestic and foreign trademark portfolios.
- Corresponded with foreign counsel; monitored foreign trademark practices and procedures.
- Performed trademark clearance searches.
0-5 years of experience
Prepared provisional, utility, design and PCT applications for filing which included preparing drawings, formal documents such as Information Disclosure Statements, Assignments and Declarations, calculating filing fees and ordering any additional documents from the PTO or outside vendors to complete filings. Coordinated with foreign patent agencies and their International Patent Offices regarding foreign filing procedures. Prepared final documents for attorneys’ signature(s). Filed documents with the USPTO by mail, courier or by Electronic Filing System (EFS). Updated prosecution and correspondence files after filings and/or after receipt of any correspondence from the USPTO, clients or other agencies.
- Prepared correspondence to clients, their agents and various International Patent Offices regarding the status of applications. Updated clients of patent maintenance fees due, and requested their decision to keep patents active or allow to become abandoned with the USPTO.
- Conducted searches for Patents & other Publications using the USPTO database system PAIR.
- Followed-up & maintained a daily review of the docket with attorneys and staff.
6-10 years of experience
- Prepared patent applications for filing in the U.S. Patent and Trademark Office.
- Arranged filing submissions, including applications, office action responses, prior art
- Summarized prior art references and analyzed same for particular relevance.
- Communicated with foreign firms regarding deadlines and filing requirements.
- Researched patent rules and statutes.
0-5 years of experience
Directly supervised paralegals assigned to case: assist litigation attorneys in managing cases, including the staffing of such cases, in addition to the performance of litigation paralegal duties.
- Responsible for all aspects of litigation support including: preparation for filing of lawsuit, pleadings, discovery, document review, correspondence, case management, and trial preparation.
- Assisted with all aspects of discovery: document production, bates stamping, indexing, deposition preparations and privilege logs.
- Trial preparation: assembled trial and witness exhibit binders as well as expert documents; maintained communication with court personnel and outside vendors.
- Responsible for organization and file maintenance of correspondence, pleadings and document production.
0-5 years of experience
Supported attorneys and associates in the Intellectual Property Practice Group.
- Organized, analyzed and reviewed documents for attorneys.
- Prepared and maintained witness and expert materials.
- Assisted with the preparation of privilege logs.
- Provided support in deposition preparation which included document reviews, exhibits and expert reports.
- Proofread documents for errors and incorrect citation references.
- Assembled and filed trademark applications.
- Maintained docketing of all impending deadlines.
0-5 years of experience
Paralegal for major telecommunications trial.
- Collected, updated, maintained, and uploaded onto database: privilege logs, discovery documents, deposition transcripts, exhibit list, court clip, witness deposition kits, pleadings and correspondence folders, production of documents.
- Responsible for cite checking.
- Created and maintained all the various spreadsheets for tracking case progress.
- Importing and exporting case data, data manipulation and conversions, scanning, organizing case-related data on the network and maintaining media/data.
0-5 years of experience
- Prepared, docketed and tracked US and foreign patent and trademark filing using CPI database; corresponded with foreign
- Coordinated payment of all patent/trademark maintenance fees/renewals
- Drafted and processed IP agreements (non-disclosure, material transfer and consulting agreements)
- Created Trademark Database in MS Access; assisted in designing and implementing new Agreement Management Database
0-5 years of experience
- Served as communication liaison with international and domestic clients and various local counsels on a daily basis
- Handled administrative processes including performing interview intakes and maintaining clients’ files
- Reviewed and analyzed Trademark Registration Certificates, trademark applications, Notices of Recordals for title update projects and copyright applications
- Prepared expense reports for client services for billing department
0-5 years of experience
Organized and managed several large IP litigation cases.
- Assisted Attorneys with all aspects of Trial and Markman Hearing preparations.
- Attended trial and assisted with demonstratives and exhibits.
- Reviewed, assembled and indexed deposition exhibits pleadings and correspondence.
- Negotiated arrangements with outside vendors and assisted with database
- Ordered patents and file histories; updated and indexed file histories; conducted patent searches; gathered and obtained prior art from various sources.
- Arranged for videographers and court reporters for depositions.
0-5 years of experience
Temporary assignment managed by Exclusively Legal]
- Prepared patent prosecution filings for US and foreign applications and issued patents.
- Managed docket and daily work flow for attorney teams.
- Drafted reporting letters and client communication regarding status of various matters.
- Maintained communication with foreign affiliate counsel and minimized costs.
0-5 years of experience
- Managed patents, trademarks, contracts and other legal projects.
- Designed, developed and delivered Intellectual Property workshop and targeted orientations.
- Designed, developed, tested and oversaw implementation of contracts database.
- Assisted in creating Intellectual Property budget and ensured the accuracy of all vendor invoices.
- Drafted standardized contracts, rewrote existing contract terms and drafted new terms.
- Worked with legal and technical personnel as well as outside vendors to ensure that competitive searches were valuable.
0-5 years of experience
Performed IP portfolio review, including due diligence analysis and searches in various databases and preparation of summary and detailed reports
- Prepared all types of patent and trademark filings for submission to the U.S. Patent and Trademark Office for all members of IP department
- Prepared documents for filing in foreign trademark offices
- Filed documents electronically with the U.S. Patent and Trademark Office using EFS-Web and TEAS
- Prepared reporting letters to clients and instructions to foreign associates
- Prepared patent and trademark status reports
- Planned and conducted training of IP-specialty employees
0-5 years of experience
maintained docket calendar for large portfolios: 2,000 to 3,000 matters
- contacted clients regarding deadlines, documents and fee schedules
- obtained and processed original documents, legalizations and notaries
- processed maintenance fees, and updated fee calendar for all international matters
- organized files for large portfolios
- met constant deadlines and maintained strong attention to detail and accuracy
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Intellectual Property Paralegal
Last edited by: Gabriela Barcenas, CPRW, Content Writer II -
Gabriela Barcenas
CPRW, Content Writer IIGabriela is a Certified Professional Resume Writer (CPRW) and career adviser. With 10 years of digital media experience and five years of resume writing expertise, her publication history includes fashion, education, travel, social justice, equitable design and career advice.
