Intellectual Property Paralegal

Barbara M. Gesiakowski

312-***-**** - ***********@*****.***

Intellectual Property Law paralegal

Relevant Work Experience

Blue Cross and Blue Shield Association, Chicago, IL, April – May 2018

Trademark Paralegal, (Contract Position)

Audit Project: Review of the international trademark files for originally executed, official, and certified documents.

Foley & Lardner, LLP, Chicago, IL, August – October 2017

Patent Paralegal, (Contract Position)

Assist with overflow of U.S. patent prosecution that includes:

Complex IDS projects – cross-referencing existing prior art, entering new references, and updating status of same; retrieving translations/abstracts for foreign references; preparing IDS Statements and SB/08 forms; filing in EFS Web.

Filing assignments, declarations, issue fees, and Certificates of Correction.

Newell Brands, Downers Grove, IL, November - December 2016

Trademark Paralegal, (Contract Position)

Conduct structured trademark clearance searches using Corsearch, the internet, and other databases.

Integrate new trademark acquisitions, ensuring up-to-date correspondence of files to records in WebTMS and create basic summary and archived file reports.

Assist with other due diligence matters, including integration of information for attorney billing.

Baxter International, Inc./Baxalta U.S., Inc., Deerfield, IL, August 2014-December 2015

Sr. Paralegal

Manage outside patent counsel and docketing of patents and train docketing specialist staff.

Manage patent renewal process, that includes providing quarterly renewal reports to attorneys and instructions to outside vendor regarding same; updating information weekly as required for renewal maintenance; provide renewal cost estimates for attorneys; analyze and provide reports of cost break-downs; review and approve/dispute vendor invoices.

Manage invention disclosure process, including submissions, internal attorney review, filing, and publication of new inventions; set up meetings between inventors and outside counsel.

Integrate new patent acquisitions, manage outsourcing to counsel.

Provide support for assertion of IP rights internationally that includes conducting research and document discovery for on-going litigation and European opposition watches.

Projects: Provide support for Patent Term Extension and SPC filings that included collaborating with Regulatory for data; PowerPoint presentation on “PTE Filings”; IP intelligence gathering for business deals; draft/edit IP licensing, material transfer, and assignment agreements; analyze contracts relating to medical studies program for IP due diligence; create Standard Operating Procedures for internal docketing.

Motorola Solutions, Inc., Schaumburg, IL, January 2012-June 2014

Patent Specialist, (Patent Prosecution)

Manage foreign and international patent application filings via Paris Convention and Patent Cooperation Treaty (PCT); handle all related follow-up activities; advise on filing strategies to align with business goals.

Provide and maintain reports to the Company from patent database for use in secondary foreign filing decisions, and attorney prosecution review matters.

Monitor changes and updates in foreign and international patent law; inform attorneys and staff of same.

Collaborate in development of quality control procedures, create and maintain documentation for same in foreign filing, U.S., and international docketing practices in paperless environment.

Special projects: PowerPoint presentation of “Secondary Patent Filing Process” – a comprehensive overview of the foreign filing decision making process, application filing process, and post filing activities. Project Manager for “Time Management Project” - organized, implemented and supervised project to track and capture data on Patent and Trademark Operations support staff’s daily activities and work flow.

Olson & Cepuritis, Ltd, Chicago, IL, July 2006-November 2009

Patent Paralegal, (Patent Prosecution and Trademark Litigation)

Manage foreign filing via Paris Convention and PCT; provide counsel and guidance to clients for entry into the National/Regional phases; prepare filing instructions to foreign counsel.

Manage and maintain ownership integrity of foreign patent portfolios, including preparation and handling of patent estate assignments of domestic and foreign patents and applications.

Monitor changes and updates in PCT regulations and procedures; inform attorneys and staff of same.

Maintain patent renewals through annuity service and instructions to foreign associates.

Monitor online infringement for unauthorized transfer of license-protected products; prepare notices of claimed infringement and procedural follow-up requests for injunctive relief; provide reports to client and maintain related records and data.

Analyze online search process; prepare manual of protocol and procedures for presentation and training of corporate in-house client for the requirements of conducting and reporting online infringement.

Projects: Refine protocol for assignment procedures for efficiency and cost-effective results prior to National/Regional phase entry; IP Intelligence gathering within competitor’s patent portfolio for attorney evaluation and strategic analysis; conduct prior art searches for freedom to practice opinions and non-infringement assessments; collect online consumer evidence of brand confusion in trademark litigation.

Clausen Miller, LLC, Chicago, IL, November 2005-February 2006

Paralegal, (Temporary: Litigation)

Manage large discovery; including review, summarization, and indexing of produced documents and organization and preparation of documents for production.

Prepare deposition abstract summaries and privilege logs; perform fact investigations and conduct legal research; assist attorneys in trial preparation of exhibit lists, witness files and other related tasks.

Manage case rooms; organize and maintain pleadings, discovery, and correspondence files.

Cook, Alex, et al., Ltd, Chicago, IL, June 2005-November 2005

Patent and Trademark Paralegal, (Patent and Trademark Prosecution and Litigation)

Prepare electronic U.S., foreign and international (PCT) patent application filings and related prosecution formalities; obtain legalization/apostille; process post-issuance requests and patent annuities.

Prepare electronic U.S. trademark application filings, amendments, SOU’s, §§8 & 15 declarations, and §§8 & 9 declarations/renewals.

Create and maintain prior art databases; prepare client status reports for patent portfolios.

Conduct legal research and monitor status of pending applications; perform document reviews, summarizations and indexing of discovery and organize and prepare documents for production.

Howrey Simon Arnold & White, LLP, Chicago, IL, January 2001-February 2004

Legal Assistant, (Intellectual Property/Commercial and Antitrust Litigation)

Trial preparation; onsite document review (BMW and Motorola).

Prepare supplemental pleadings documents and exhibits for court filings.

Prepare Joint Development, Confidentiality and Licensing Agreements.

Banner & Witcoff, Chicago, IL, November 1998-January 2001

Legal Assistant, (Patent and Trademark Prosecution and Litigation)

Prepare U.S. patent, design, and trademark applications with related formal papers, and prepare client status reports.

Prepare post-issuance and post-registration/annuity matters for patents and trademarks.

Assist in the preparation of pleadings documents and exhibits for court filings.

Education

Roosevelt University, Paralegal Studies Program, Chicago, IL, 2005 - ABA-approved Paralegal Certificate w/honors

Trademark filing & prosecution, IP Paralegal Institute, 2016 (CLE – 6 sessions)

John Marshall Law School, Chicago, IL – Advanced PCT Seminar, 2006

St. John's College, Annapolis, MD – B.A.; Majors: Philosophy and Mathematics

Software & Skills

USPTO EFS Web, PAIR, ePCT, PATENTSCOPE, Espacenet; and various foreign PTO sites

USPTO TEAS, TESS, TSDR, TTAB, and ETAS; Corsearch and WebTMS

FileSite, Legal Key, iManage, IPManager, PACER, Lexus Nexus and Westlaw

Microsoft Office, Excel, MS PowerPoint and Access, Adobe Acrobat; and intranet CONVERGE

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