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Patent Paralegal Resume Samples
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0-5 years of experience
Advanced to a Paralegal Assistant position after four months as a receptionist and to Senior Paralegal Assistant after one year
- Performed legal research and assisted in the prosecution of United States and international patent rules
- Independently developed a knowledge base regarding patent law
- Composed, drafted and revised correspondence and legal documents for clients and attorneys with strict attention to deadlines
- Created and maintained calendars for attorneys with important deadlines
0-5 years of experience
Negotiated, drafted, and reviewed contracts in Ariba SharePoint for compliance with FDA regulations, and non-disclosure agreements among 35 states.
- Conducted on-line pharmacovigilance/E-Discovery research for Regulatory FDA RIM compliance of pharmaceutical-osteoporosis drugs with IBM Officer.
- Created MS Excel spreadsheets for IT vendors, while monitoring Microsoft SQL/SSIS queries via Access database VBScripts from ad hoc data.
- Assisted officer with the prosecution of individuals for web site and publication infringement to comply with patent compliance and contract jargons.
- Managed docketing of USPTO’s for filing of trademarks, while corresponding with FDA officials for licensing of patents and utilizing FETCH.
- Reformed, negotiated, and drafted SOP contracts of partnerships and limited liability agreements based on standard regulatory with Powers Of Attorney.
- Negotiated disclosures and contracts for cost & pricing with regards to vendor licensing and compliance regulatory amendment prior to redlining.
- Abstracted and researched commercial leases with liens and service agreements while drafting certificates of incorporation/formation with ad-hoc titles.
6-10 years of experience
Handled all Docketing for patents and trademarks into computer systems; solely maintaining two docketing systems (CTS and CPI)
- Prepared & electronically filed patent applications (Provisional & NonProvisional), IDS, Issue Fees and retrieved previous patents and documents necessary for Office Actions and other PTO Forms
- Filed Amendments, Final Amendments, Restriction Requirements, various Petitions, RCEs, Notice of Appeals, Appeal Briefs, Reply Briefs, and all other documents involved in patent prosecution
- Maintained all the firm’s working files and ensured all the firm’s statutory deadlines were maintained and met
- Proofread and made corrections on all final patent applications, amendments, and all documents filed with the USPTO, including Assignments, Decs & Sub-Decs
- Assisted converting foreign & PCT patent applications into US Applications
- Performed legal research for potential patent litigation cases
- Head Paralegal, in charge of training, coordinating and supervising multiple junior paralegals and secretaries
0-5 years of experience
Responsibilities included assisting three patent attorneys.
- Thorough knowledge of IP procedures and performing legal and administrative tasks.
- Acted as liaison between attorneys, clients, World Trade locations, and consulting law firms.
- Timely preparation of and protection of detailed legal and technical documents, including patent applications, amendments, and various Office Actions for filing in the U.S. Patent & Trademark Office.
- Maintained and supervised IP docket, filing status, and prosecution calendar for attorneys’ case load.
- Scheduled appointments, coordinated travel arrangements, meetings, and presentations in addition to general administrative duties.
- Organized and prioritized attorneys’ workloads and assisted other paralegals with their workloads for filing deadlines.
0-5 years of experience
Supported senior partner and worked closely with other partner level attorneys, associates, and scientific advisors in foreign patent office of firm
- Communicated directly with clients and foreign counsel regarding foreign patent filing campaigns and foreign application filing and various office actions
- Obtained documents due such as Power of Attorney, Assignment of Rights and facilitated matter forwarding to foreign counsel, EPO, WIPO, etc.
- Researched International PCT regional stage applications and patent publications through national intellectual property patent databases EPO, NIPO, OEPM, SIPO
- Updated and maintained IP docketing and annuity management systems
0-5 years of experience
Managed and maintained CPI patent docketing system.
- Trained junior docketing staff on domestic and foreign articles/rules, patent docketing system, and annuities.
- Evaluated new file transfers and acquisitions to ensure accurate docketing and data entry into patent
- Performed all docketing reports and queries.
- Assisted Patent Administrator with special projects.
0-5 years of experience
Prepared international (PCT) and foreign patent filings.
- Managed foreign actions and steps in prosecution.
- Drafted reporting letters and client communication regarding status of various actions.
- Maintained communication with foreign affiliate counsel.
- Prepared client portfolio status and due diligence reports.
0-5 years of experience
Reviewed and analyzed over 1000 highly confidential patents and applications for relevancy
- Selected to travel to Israel to learn new docketing database in order to administer training to coworkers
- Scanned documents and transferred them into electronic copies for more efficient accessibility
- Managed an Excel spreadsheet to track all patents/applications and distributed the spreadsheet to the scientists
- Processed electronic billing invoices for payment
- Collaborated with corporate headquarters in Israel to ensure electronic files transferred properly
0-5 years of experience
Managed data migration to Lecorpio case management system for Patent Legal Department
- Verified inventorship using Declarations, Assignments, and IDF
- Corresponded with in-house attorneys regarding status of applications provided by outside counsel
- Reviewed and requested additional information from law firms in reference to data reconciliation project
- Audited file histories and previously entered data, including priority information, against PAIR, WIPO, and Espacenet
- Instructed Corporate Engineers on various data sync to Lecorpio
- Conducted staff trainings on Lecorpio Data Reconciliation Project
- Provided back-up support on various patent projects as well as in Docketing Department
0-5 years of experience
- Prepared and electronically filed U.S. patent applications with the United States Patent and Trademark Office
- Drafted and processed official correspondence
- Researched, prepared and filed Information Disclosure Statements
- Conducted electronic patent searches
- Generated and provided clients with patent status reports and invoices
0-5 years of experience
- Filed U.S. patent applications (Utility, Design, Provisional and Continuation) and responded to notices from the United States Patent and Trademark Office.
- Filed foreign patent applications (PCT Requests and Demands) respond to Invitations from the PCT, and provided documentation as requested from foreign agents.
- Prepared documentation through all stages of prosecution (Filing Missing Parts, Office Action and Issue Fee) and prepared documentation required by USPTO (Declaration, Assignment, Power of Attorney, Formal Drawings and IDS).
- Maintained patent docket database to ensure that all deadlines are met accordingly and exceeded expected billing hours on a monthly basis.
- Interviewed paralegal candidates and trained new hires as well as mentored current staffed paralegals for further development.
0-5 years of experience
Prepared all documents for National Phase filings including, Agreements, Assignments and Power of Attorney for filing with international agents.
- Provided instructions to foreign agents on all International Phase filings.
- Docketed U.S. and Foreign Filing correspondence into CPI Patent database.
- Performed cost analysis of translation services.
- Monitored and tracked critical due dates to ensure deadlines were met in timely manner.
- Assisted in completion of IP group projects as needed.
- Beta tested with the integration of the new paperless First to File software system.
- Collaborated with patent attorneys and management to align company-wide consistency in policy and procedures.
- Maintained and quality controlled patent database.
- Primary contact for foreign agent, external clients and internal personnel on patent related matters.
0-5 years of experience
- Organized disclosure reviews, prepared complex reports & metrics for Patent Review Committee (PRC) to aide in their decision making.
- Performed web based patent searches.
- Ran Queries and generated reports for the management.
- Reviewed outside counsels’ monthly status reports and reconciled them with our database.
- Created, updated, and maintained spreadsheets on Livelink (internal portal for disclosure management).
- Acted as a liaison between inventors, docketing, in-house counsels, outside counsels, and foreign agents.
- Performed agreement/licensing with third-party searches using Document Express and Legal File Index.
- Provided patent litigation support to the attorneys.
0-5 years of experience
- Prepared disclosures for filing with the USPTO and the International Bureau of WIPO and prepared documents for foreign filing instruction for various countries.
- Assisted office manager with human resources duties such as interviewing prospective staff and trained and supervised paralegals, legal secretaries and legal assistants.
- Filed electronic responses to office actions for Trademarks with the USPTO.
- Prepared reporting letters to clients and responded to issued Office Actions and notifications from the USPTO and issued notifications from WIPO; prosecuted applications until allowance and maintained docket summaries for over 100 cases.
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Patent 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.
