Experience
Jane E. Callahan
New Providence, NJ 551-***-**** ¢ ********@***.***
Merchant & Gould, P.C., New York, NY (February 2018 Present) Intellectual Property Specialist
On assignment working in various capacities.
Gearhart Law LLC, Summit, NJ (2016 2018)
Office Manager
• Handle recruitment screening, interviewing and termination processes for all personnel.
• Perform on boarding processes for newly hired personnel.
• Oversee and distribute paralegal workflow.
• Create and manage personnel files and attendance tracking.
• Implement performance reviews for non legal personnel.
• Initiate one on one reviews individually with non legal staff.
• Act as liaison to resolve employee disputes.
• Manage and coordinate office support staff vacations and sick days.
• Responsible for all property management services and vendor contacts.
• Facilitate billing matters with clients and outside vendors.
• Responsible for patent prosecution matters (30%). Cooper & Dunham LLP, New York, NY (2015 2016)
Supervising Paralegal/Manager
• Provided overall training, supervision and management of approximately fifteen paralegals.
• Acted as liaison on various matters between IP attorneys, patent agents, scientific advisors and paralegals.
• Initiated interviewing process for all new IP paralegals, patent agents and docketing clerks.
• Managed employee relations matters for paralegals including mediation methods for performance improvement and separation processes.
• Enforced firm policies and procedures.
• Provided guidance and direction to paralegals, patent agents and docketing clerks. Vedder Price, P.C., New York, NY (2014 2015)
Senior IP Paralegal
• 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.
• Drafted 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.
• Coordinated foreign filing deadline reminders, track PCT national stage and direct national stage deadlines and prepare and file Information Disclosure Statements. Hoffmann & Baron, LLP, Parsippany, NJ (2012 2014)
Patent Paralegal
• Paralegal Coordinator for IP boutique law firm. Client base included Medical Devices, Computer and Electronic Engineering, and Pharmaceutical Patents.
• Prepared 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. Lerner, David, Littenberg, Krumholz & Mentlik, LLP, Westfield, NJ (2010 2012) US Patent Assistant
• Maintained 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. Glenmark Pharmaceuticals, Mahwah, NJ (2008 2010)
IP Administrator
• Responsible for day to day US Generics IP legal operations division.
• Manage docketing system in accordance with outside counsel prosecution.
• Responsible for preparation and dissemination of quarterly IP budgetary reports within organization.
• Prepare and maintain electronic databases for business confidentiality contracts, agreements and licenses for Glenmark and various distributors.
Tso and Associates LLC, Millburn, NJ (2007 2008)
Practice Manager/Office Manager
• General responsibility for marketing and business 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.
Pfizer Inc., New York, NY (2002 2007)
Senior Specialist/Supervisor
• Organized, coordinated and assisted in providing strategic alliance and project management support to resolve patent project issues.
• Supervised IP staff of 23 coordinators globally to ensure compliance with Pfizer patent filing procedures.
• Interfaced with IP colleagues to provide support for initiatives that impact supportive regional liaison function through alignment of the business and TAs.
• Served as point of contact for country management and foreign associates to ensure markets are aware of patent portfolios.
• Facilitated communication project process and follow up to liaison business units for meeting business unit expectations.
• Supported global therapeutic area leaders, product attorneys, regional liaisons, and other groups and teams to ensure reliable advice is provided to the business.
• Provided relevant patent expiry and portfolio reports on commercial products to ensure smooth deployments of loss of exclusivity and product information.
• Monitored foreign statutory, legislative and regulatory changes relevant to patent linkage issues.
• Organized and communicated new IP developments of patent practices as they occurred globally on country by country basis.
• Facilitated divestitures, ownership transfers and conversions of the Pfizer group of companies.
• Served as IP community manager, maintaining department's website and intranet pages concerning foreign IP developments.
• As member of cost saving initiative team, assisted in development of team practices relating to partnering program of fixed fee arrangements.
• Managed internal communications and streamlined operational support process to enhance efficiency in conjunction with cost savings effectiveness.
• Involved in negotiation of fixed fee contracts with domestic and foreign counsel in establishment of competitive price structures.
• Coordinated in house CLE and PLI educational opportunities for company wide patent attorneys.
• NY based contact person for organizing educational opportunities to patent attorneys. BakerBotts LLP, New York, NY (1999 2002)
Patent LegalAssistant
• Assisted 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, and Re exam proceedings, correspondence.
• Examined 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.
• Handled correspondence between foreign associates and clients regarding patent prosecution, registration and maintenance.
Technical Skills
MS Exchange Microsoft Office•Word•Excel•PowerPoint•Outlook•PC Docs•iManage IPDAS•ADP•Paychex•PayJunction• Prolaw• ThomsonReuters • FileSite• CMFE Education
M.A., Seton Hall University, South Orange, NJ Systematic Theology B.S., Kean University, Union, NJ Management Science