patent prosecution paralegal
Resume:
LISA ANNE GRASSO
************@*****.***
SAN CLEMENTE, CA 92672
SUMMARY
Senior patent paralegal with extensive experience in US and foreign global patent, copyright, and trademark filings. Responsible for global enforcement related to competitor applications and patent brand enforcement. This included foreign applications/patents on diverted products and brand cease & desist matters. Research on vendor patents and counterfeit products. Also responsible for preparing and executing all contracts with inventors and sales personnel.
SKILLS & ABILITIES
Certified paralegal, pursuant to California Business & Professions Code §6450
Certified in the e-filing of California State and Federal cases.
Pertinent software skills: Microsoft Office Suite, Computer Packages Inc (CPI), Computer Packages Annuities (CPA), Foundation IP (FIP), Westlaw, Lexis, Carpe Diem, Timeslips, PubMed, Trademark Electronic Application system (TEAS), Trademark Electronic Search System (TESS)
EXPERIENCE
2018 – Present Consulting Chicago, IL
Patent Paralegal for Chicago Firm: duties included filing PCT applications; proofing patents; product research; due diligence etc.
2010 – 2017 Alphatec Spine, Inc. Carlsbad, CA
Senior Patent Paralegal & IP Manager
Senior paralegal responsible for all US and foreign patents, trademarks, docketing and filings.
Prepared all patent and trademark documents for filing with USPTO and PCT filings, and instructed foreign associates for all foreign filings.
Drafted initial application filings, formal documentation, amendments, and draft responses.
Consulted with examiners at USPTO and with foreign associates.
E-Filed documents with USPTO.
Conducted weekly docket meetings to discuss USPTO review of all incoming & outgoing correspondence.
Maintained all Patent & Trademark files using Foundation IP Docket System (FIP) and Computer Packaging (CPA) Annuities.
Responsible for entire docket system.
Coordinated the docketing of all incoming correspondence
Generated docketing reports.
Liaison with patent draftsmen, outside counsel, engineers, physicians, and inventors.
Additional duties included:
Responsible for invention disclosures & lab notebooks.
Prepared educational materials for IP Engineering Lunch and Learn seminars.
Authored meeting materials for IP Steering Committee meetings.
Responsible for global enforcement related to competitor applications and patent brand enforcement. This included foreign applications/patents on diverted products and brand cease & desist matters. Research on vendor patents and counterfeit products.
Prepared and coordinated all NDA / CDA Agreements. Also responsible for preparing, executing and enforcing all contracts with inventors, engineers and sales personnel
Responsible for physician royalty payments. Responsible for Patent Awards Program for inventors, budgets and complete lists of all IP with pictures of inventions for corporate meetings and bank updates.
EXPERIENCE
2008-2010 Consulting Chicago, IL
Patent Paralegal for Chicago Firm: duties included filing PCT applications; proofing patents; product research; due diligence etc.
2005 – 2008 Birch Stewart Kolasch & Birch, LLP Del Mar, CA
Intellectual Property Patent Paralegal
Coordinated both domestic and foreign patent filings as well as foreign trademark prosecution. Maintained our largest biotech/chemical client, including foreign and U.S. patent and trademark portfolios.
Assisted multiple attorneys, patent searching, timekeeping, patent application filings, technology licensing, and enforcement of intellectual property rights in federal and state courts.
2000 – 2005 Knobbe, Martens, Olson & Bear, LLP Irvine, CA
Intellectual Property Legal Assistant
Drafted initial application filings both US, Foreign and PCT.
Coordinated both domestic and international patent and trademark filings primarily of pharmaceutical, medical device, biotechnology, and biochemistry patent applications.
Regularly conducted client meetings to both obtain and disseminate information relating to a wide variety of intellectual property activities.
Assisted multiple attorneys by handling their patent searches, timekeeping, patent application filings, information disclosure statements, trademark availability screening, and technology licensing.
Helped with the enforcement of intellectual property rights in federal and state courts.
1990 – 2000 Impra, Inc. / C.R. Bard Tempe, AZ
Intellectual Property Paralegal & Executive Assistant
Provided administrative support to Vice President of R&D as well as the entire Research & Development department.
Maintains all Intellectual Property files as well as coordinates invention disclosures and contracts.
Responsible for all lab notebooks for inventors and scientists.
Administrative leadership role within the R&D Department and supervised junior secretary pool.
Filing of all applications and maintenance fee payments including Foreign Annuity payments and maintenance fees.
EDUCATION
Northern Arizona University Flagstaff, AZ
Marketing and Business Admin courses.
Meet Paralegal requirements, pursuant to California Business & Professions Code §6450
References available upon request
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