Senior Patent Paralegal/ Patent Analyst
Resume:
Thousif Syedin
**** **** *** ***** ******, Apt. No. 2108, Chicago IL 60607
********@*****.***
EDUCATION:
Certified Patent Valuation Analyst Program (Currently in progress)
Post Graduate Diploma in IP Law and Management (2014)
IIPTA (Indian Institute of Patent and Trademark Attorney)
Golden Gate University, San Francisco CA (2012)
B.S Business Administration
University of San Diego, CA (2010)
Paralegal Program
SPECIAL COURSES: E-Discovery, Litigation Support, IP Valuation, IP Monetization, IP Licensing and Certified IP Courses at WIPO.
SKILLS:
Familiar with Case Management, TOA’s and TOC’s, E-Discovery, Proof reading, Docketing, Depositions, Trial Preparation, Redaction, Calendaring, Filing motions, Pleadings, Complaints and Correspondence.
Knowledge of USPTO, IP Prosecution/ Litigation rules and procedures.
Excellent writing, analytical, oral communication, organization and logical skills.
Computer proficiency in MS-Office, Transcription, PACER, Docketing Management Software’s, TABS, Summation, Relativity, Microsoft Office, Sharepoint, CPi, Foundation IP, EFS-Web, PatentIn, ProLaw, PATTSY, Anaqua,, iManage, IPDAS, Memotech, Adobe Acrobat, Outlook, MaxVal IDS, Westlaw and Lexis Nexis.
Lead Lean Six Sigma events. Assist in executing Black Belt Projects, kaizen events, site and department lean assessments, cultural transformations.
Responsible for creating documentation and visualization which analyzes operational lean processes to enhance organizational performance, create metrics, analyze current processes, and understand the needs for organizational capacity.
LEGAL EXPERIENCE:
Cardinal Health, Inc., Chicago, IL (11/2015 – Present)
Senior IP Paralegal
Prepare and file US Provisional, Non-Provisional, Divisional, CIP, Continuation and PCT Applications.
Board member of the Invention Review Board (IRB), work closely with Inventors and clients on preparing invention disclosure forms and NDA’s for upcoming Inventions Review meeting.
Prepare spreadsheet of metrics for invention disclosures generated and applications filed.
Work with R&D (Research and Development) team to determine disclosures that will go to the IRB (Invention Review Board) and analyze critical areas to progress.
Set up and take minutes during the IRB meetings, and generate monthly reminders on disclosures that have been selected for patenting.
Served as a liaison between R&D, various business units and law department.
Respond to foreign agents report/ request as appropriate.
Prepare and File amendments, responses, RCE’s, Advisory Actions.
Meet with attorneys and agents on a bi-weekly basis to discuss docket and keep up with the prosecution matters.
Prepare NDA’s and Licensing Agreements.
Perform patent searches, due diligence reports and charts.
Perform the tasks for the post allowance and Issue Fee Checklist to make sure all the formal documents are in order.
Manage IDS portfolio, from preparing the drafts to filing of IDS’s.
Perform IDS Audit; a process where vetting of references and disclosures that has not been cited in various sources of the matter to avoid paying for RCE’s and potential infringement issues.
Assist in preparing SOP’s (Standard Operations Procedures) for IDS Audit Process, Post Allowance of the Patent Application Process and In-House Filing Procedure from the initial draft to the filing of the patent application and onto the post grant status.
Follow up with the examiners at the USPTO to arrange interviews and to provide necessary corrections.
Fernandez & Associates, Atherton CA (10/2014 – 10/2015)
Patent Analyst
Prepare and send out reporting letters to clients for various correspondences.
Prepare formal documents and assist attorney through the entire stage of Patent Prosecution from gathering initial documents through filing with USPTO and onto grant of patent.
Performed Patent/ Trademark searches.
Patent and Trademark Litigation cases, from filing declarations, motions, complaints with the court and sending out demand letters.
Support inventors with initial claim drafting and writing utility/ design patent applications.
DLA Piper LLP, Chicago IL (09/2013 – 10/2014)
Patent Paralegal
Prepared, compiled and filed various documents with the USPTO, EPO and WIPO to include Foreign, PCT and Domestic Patent Applications.
Managed and created Sequence Listings, responded to Office Actions US and PCT: NDA’s, Notice of Allowance, Advisory Actions, Post-Allowance Requests for Examination, Restriction Requirements, Missing Parts, Corrections and Appeals.
Prepare basic restriction responses, amendments and amendment under 37 CFR 1.312 for filing in Patent and Trademark Office
Professor Mark Abumeri, Partner at Knobbe Martens Olson and Bear LLP
Student Clerk (09/2008 – 06/2010)
Learned the patents process from obtaining rights from USPTO, licensing agreements to enforcing rights granted
Prepared various Information Disclosure Statements pertaining to Patent Applications
Filed patent applications, prosecution responses, and continuing applications
Analyzed PTO forms while identifying, patenting, strategizing
Participated in patent and trademark litigation and analyzed damages and cost containment issues.
Professor Hani Z. Sayed, Associate at Rutan and Tucker, LLP
Student Clerk (09/2008 – 06/2010)
Used USPTO for searching patents through PAIR and TESS for trademark searches.
Analyzed patent families and searched for due diligence.
Wrote various patent applications, securing patents pursuant to the rules and procedures of the USPTO.
Honed a basic understanding of Foreign IP protection and prosecution.
Contact this candidate