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IP/Patent Paralegal

Location:
Matawan, New Jersey, 07747, United States
Posted:
December 07, 2017

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Peter J. Quilla

** ***** **** - ***. * • Matawan, NJ 07747 • 732.***.**** • ac3mvt@r.postjobfree.com

https://www.linkedin.com/in/petequilla

Intellectual Property Paralegal Professional Experience (10 years) Current Position (Contract Position)

Maquet Getinge - Mahwah N.J. - April 2017 to present Patent Paralegal (in-house - medical devices)

● Maintained Patent Prosecution Docket for the company's patent portfolio. Created and ran docket status reports for specific business units as assigned to individual attorneys through the use of IP Manager. Ran weekly docket meetings for said specific business units. Also created new electronic files as new matters were created.

● Prepared and/or Electronically Filed the following: Domestic medical mechanical and electronic utility (provisional, non-provisional, continuation, CIP and divisional) and design, national phase and international PCT patent applications

(with the use of PCT zip files) - Preliminary Amendments - Substitute Specifications - Responses to Non-Final and Final Office Actions, Restriction Requirements and Responses to File Corrected Application Papers – Information Disclosure Statements (SB08) - Extensions of Time - Request for Continued Examination (RCE) - Recordation of Assignments - Powers of Attorney - Payments of Issue Fees – Declarations

● Corresponded with other company offices, outside counsel and foreign agents regarding upcoming deadlines for domestic and foreign patent applications and renewals.

● Researched various international governmental patent websites (WIPO, eSpacenet, JIPO, CIPO, KIPO) in order to track down prior art references for use with the filings of IDSs.

● Monitored our in-house inbox dedicated to the receipt of email from outside sources.

● Corresponded with translation agents regarding filing of translated claims for nationalized European cases. Permanent/Long-Term Positions

Church & Dwight Co., Inc. (Arm & Hammer) – Princeton, N.J. - July 2014 to November 2016 Patent Prosecution Paralegal (in-house – consumer products)

● Maintained Patent Prosecution Docket for the company's patent portfolio. Created and ran docket status reports for various attorneys through the use of FIP (Foundation IP). Ran 30-Day, 60-Day or 90-Day Docket Reports on a weekly basis for the Patent Group. Also docketed new actions in an immediate or timely manner as they came about. Also created new physical files as well as new electronic files as new matters were created.

● Prepared and/or Electronically Filed the following: Domestic chemical, mechanical and electronic utility (provisional, non-provisional, continuation, CIP and divisional) and design, national phase and international PCT patent applications

(with the use of PCT zip files) - Preliminary Amendments - Substitute Specifications - Sequence Listings -Responses to Non-Final and Final Office Actions, Restriction Requirements and Responses to File Corrected Application Papers – Information Disclosure Statements (SB08) - Extensions of Time - Request for Continued Examination (RCE) - Recordation of Assignments - Powers of Attorney - Payments of Issue Fees – Declarations

● Request Patentability and FTO searches from outside counsel. Set up meetings between in-house patent counsel and members of C&D R&D to discuss findings. Wrote FTO and patentability reports clearing new products/inventions as directed by the patent counsel.

● Informed members of R&D about issuance of company patents in the United States.

● Corresponded with outside counsel and foreign agents regarding upcoming deadlines for domestic and foreign patent applications and renewals.

● Researched various international governmental patent websites (WIPO, eSpacenet, JIPO, CIPO, KIPO) in order to track down prior art references for use with the filings of IDSs.

● Monitored CPA Direct for quarterly renewals due on company's patent portfolio

● Validated granted foreign patents.

● Monitored our in-house inbox dedicated to the receipt of invention disclosures from our R&D personnel.

● Corresponded with translation agents regarding filing of U.S. Patents in foreign countries McDermott, Will & Emery, LLP - New York, N.Y. - February 2012 to March 2013 Patent Prosecution Secretary

● Prepared and Electronically Filed the following: Domestic chemical, mechanical and electronic utility (provisional, non-provisional, continuation, CIP and divisional) and design, national phase and international PCT patent applications

(with the use of PCT zip files) - Preliminary Amendments - Substitute Specifications - Sequence Listings - Responses to Non-Final and Final Office Actions, Responses to Restriction Requirements and Responses to File Corrected Application Papers - Information Disclosure Statements (SB08) - Extensions of Time - Request for Continued Examination (RCE) - Statements Under 3.73 (b) - Payments of Issue Fees – Declarations

● Corresponded with outside counsel and foreign agents regarding upcoming deadlines for domestic and foreign patent applications and renewals.

● Drafted and sent issued Letters Patent correspondence to clients.

● Researched various international governmental patent websites (WIPO, eSpacenet, CIPO, JIPO, KIPO) in order to track down references for use with the filings of IDSs.

● Maintained extensive contact with the USPTO in order to obtain updates on any current domestic patent applications.

● Proofread drafted patent applications prior to filing for detection of any format, grammar and punctuation errors.

● Created and ran docket reports for various attorneys, through the use of CPI, in order to keep track of upcoming case actions. Also docketed new actions in an immediate or timely manner as they came about.

● Booked travel arrangements and conference rooms for the various attorneys in the firm’s patent prosecution group. Also maintained current files and opened new matters.

● Regularly interacted with the firm’s billing department in order to facilitate payment of invoices for various client matters.

● Maintained time entries for various attorneys, through the use of and ETE and later, DTE. Ezra Sutton, P.A. Woodbridge, NJ - June 2007 to June 2011 (4 years) Patent, Trademark and Copyright Prosecution Legal Assistant

● Prepared and Electronically Filed the following: Domestic chemical, mechanical and electronic utility (provisional, non-provisional, continuation, CIP and divisional) and design patent applications - Patent Maintenance Fee Declarations and Patent Notices of Allowance - Responses to Non-Final and Final Patent Office Actions - Domestic intent-to-use and actual use trademark applications - Domestic intent-to-use Trademark Statements of Use and Statement of Use extensions - Domestic 8 & 15 Trademark Declarations and 8 & 9 Trademark Declarations - Recordation and change of patent and trademark assignments - Change of trademark owner’s addresses - Copyright applications for sound and video recording.

● Wrote and reported Patent Search Reports (short knock-out reports) to client with regards to their ideas for potential inventions. This was done under the direction of the attorney.

● Prepared docket reports for the firm’s attorneys and bookkeeper in order to facilitate the filing and payment of all new patent, trademark and copyright matters.

● Billed clients accordingly in order to obtain invoice payments for all of the above-mentioned IP Prosecution matters. Also maintained extensive contact with clients and attorneys regarding the management of all deadlines for IP prosecution matters.

Notable Litigation Experience

In Jay Franco & Sons, Inc. v. Franek, 615 F.3D 855 (7th Cir. 2010), I coordinated the preparation, production and filing of Motions and Appeals for the U.S. 7th Circuit Court of Appeals. Also corresponded with the Court and point persons of opposing counsel regarding said matters. Also facilitated organization of discovery for ease of attorney access and usage. Contract/Short-Term Positions

Alcatel-Lucent, Inc. – Murray Hill, N.J. - November 2013 to February 2014 In-House Patent Prosecution Legal Assistant

Servilla Whitney, LLC – Iselin, N.J. - April 2013 to August 2013 Patent Prosecution Legal Assistant (Fill-in For Maternity Leave Staff) National Starch, Inc. – Bridgewater, N.J. - December 2011 to February 2012 In-House Patent Prosecution Legal Assistant

Kane Kessler, P.C. - New York, N.Y. - June 2011 to October 2011 Trademark and Copyright Prosecution Legal Assistant Education & Professional Development

Horizon Institute of Paralegal Studies, Linden, NJ - Paralegal Studies Certificate – Completed with honors. Montclair State University, Montclair, NJ – BA - English and Journalism Member, Paralegal Association of N.J.

Member, N.J. State Bar Association (Paralegals)

Member, Middlesex County Bar Association

Notary Public – State of New Jersey

Technical Competencies

● Docketing Systems: CPI, CPA Memotech, Foundation IP, IP Manager, Worldmark

● Patent Database Systems: Google Patents, USPTO.gov (Public and Private PAIR, EFS-Web and PCTSAFE), WIPO, eSpacenet, JIPO, KIPO and CIPO

● Trademark Database Systems: Corsearch, Trademark.com, TARR, TEAS

● Document Management Systems: DeskSite/FileSite, Hummingbird, File Trail, ChekCite and CaseMap/CaseSoft

● Attorney and Administrative Billing Systems: DTE, ETE and Omega

● Basic Office Systems: Excel, Word and Outlook

● Miscellaneous Systems: Lexis-Nexis, Westlaw – DELPHION, ECF/PACER and PCLAW, Innography, Thomson IP



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