Post Job Free
Sign in

Patent Legal Secretary

Location:
Washington, DC
Salary:
68,000
Posted:
April 23, 2015

Contact this candidate

Resume:

JANICE ROSIER

**** ********** *****

Elkridge, MD 21075

Cell No.: 410-***-****

Top-notch patent assistant in support of busy partners and attorneys,

specializing in the fields of electrical, mechanical, chemistry and

biotechnology. Demonstrates excellent proofreading skills. Highly

motivated team-player but able to juggle multiple assignments

independently. Types (62+WPM). Strong working knowledge of Adobe and

database management. Obtains patents through JPO, WIPO, USPTO and EPO

search sites. Advanced in E-filings of various patent legal documents.

Experienced in patent docketing system, heavy calendaring, USPTO's PAIR,

EFS, EPAS, IPDAS, IMANAGE, PerfectLaw and Inprotech. Utilizes MS Word,

Outlook, DTE time entry, PATTSY, Legalkey, Excel, and Internet savvy.

Seeking Patent Legal Assistant position

BERMANS AUTOMOTIVE, Baltimore, MD Sales Representative

November 2014 - March 2015

. Greeted customers and asked questions to find out which automobile

they are interested in. Answered questions concerning varied

finance options. Reviewed marketing database of customers'

inquiries. Contacted customers to set up appointments. Negotiated

car prices with customers.

STITES & HARBISON, PLLC, Alexandria, VA Patent Paralegal/Trademark

Assistant

March 2012 - March 2014 (IP Partner and Manager left firm - January 31,

2014) (Laid-Off from firm)

. Busy patent legal assistant to IP partner, IP Manager, and senior

associate in busy

patent and trademark law firm.

. Acknowledged clients' e-mails, saving correspondence and attachments

in MS Word

database directory. Created file folders for new matters.

Transferred files or documents at

clients' requests. Initiated draft correspondence for Partner's

review, and drafted

legal documents for clients' execution including Declarations

and Assignments.

. Patent Prosecution - US first filings - Initiated the preparation

of PCT Applications in WIPO, completed PCT Filing Forms and paid

fees. Corresponded with foreign associates, US. Receiving Office

and international patent offices. Prepared and E-filed

provisionals, 371 National Stage applications, continuation and

divisional applications with accuracy.

. Initiated preparation of shells of documents including Statement Under

37 CFR 3.73(b) and

37 CFR 3.73(c), Assignment, IDS, and letters for Notice of

Allowance, Advisory Actions, and

Restriction Requirements.

. Received correspondence, Office Actions and invoices from foreign

associates. Maintained

foreign dockets. Sent foreign Invoices to Accounting Dept.

Prepared letters and forwarded

all actions from foreign associates to clients. Sent reminders

to clients of upcoming foreign

annuity due dates and fees.

. Knowledgeable of Asian clients and their requirements from initial

application filings to

the end of allowance of a patent.

. Maintained calendar for partner and manager meetings and travel.

Reviewed electronic daily

docket, status checks and cleared due dates.

. Obtained prior art via foreign and U.S. patent websites.

. Applauded by supervisors in pleasing clients and encouraging higher

volume of work when

filing new applications, Notification of Missing Requirements,

IDS, Assignments, POAs,

Response to Notice of Non-Compliant, and payment of Issue fees

and maintenance fees.

. Trademark Filings - Filed Responses, Extension of Time, Statement of

Use with specimens.

. Ensured all filed actions were reported in connection to the U.S.PTO.

Entered time,

requested Prebills and mailed finalized bills to client in a

timely manner.

GRIFFIN & SZIPL, P.C., Arlington, VA Patent /Trademark

Specialist

August 2008 - July 2011

. Dedicated patent legal/administrative secretary to partner and

patent agent. Knowledgeable of USPTO's patent rules. Reporting

OFRs, Notice of Publications and Corrected Filing Receipts.

. Responded to foreign clients' daily email inquiries including their

attached art in Japanese and German text. Obtained foreign

references with English translations for filing in the USPTO.

. Knowledgeable of PTO actions. Prepared appropriate responses.

Downloaded all PTO and Trademark Office Actions. Corresponded with

partner, patent agent and secretaries of upcoming due dates. Placed

communications with appropriate files for secretaries.

. Revised draft specifications and amendments. Scanned draft

applications to client with Declaration and Assignment for approval

via email.

. Prepared new application documents for filing including heavy

foreign filing, PCT, U.S. Utility, CIP and divisionals via EFS.

Filed additional documents from beginning of application to Missing

Parts, Responses, Restriction Requirements, Assignments, Submission

of Drawings, Responses, Notice of Non-Compliance to payment of

issue fees. Paid necessary government fees. Forwarded

disbursements and filing receipts to Accounting.

. Filed trademark Responses/ Renewals via TEAS in the U.S. Trademark

Office.

. Paid maintenance fees in a timely manner.

MORGAN, LEWIS & BOCKIUS, LLP, Philadelphia, PA Patent Legal

Secretary

November 2007 - August 2008 (Relocated back to Maryland)

. Cleared daily docket utilizing CPI. Sent email correspondence

concerning Responses to secretaries in the Washington, D.C. Office to

clear docket.

. Requested food and beverages for scheduled meetings in conference

rooms.

. Edited motions, responses and pleadings.

. Filed litigation documents with judge, clerk and service lists.

Utilized MS Word and IMANAGE in preparing report letters.

. Monitored and sent reminder letters of upcoming due dates of annuities

to clients. Instructed annuity service and/or foreign associates to

pay yearly annuities fees. Performed research of published

applications and forms via the U.S. PTO website.

. Coordinated travel arrangements for marketing attorney. Prepared

expense reimbursements for attorneys.

JORDAN & HAMBURG LLP, New York, NY Patent Legal Secretary

July 2007 - September 2007 (Temporary Assignment)(Previous Client)

. Experienced legal secretary supporting a partner and associate in busy

paten t and trademark practice.

. Prepared and filed new applications, Responses and Information

Disclosure Statements in the U.S. Patent and Trademark Office.

. Docketed upcoming due dates of all incoming correspondence from the

U.S. Patent Office. Drafted debit notes for attorneys' review.

Prepared letters reporting the same.

JENKENS & GILCHRIST, Washington, DC Legal Patent/Litigation

Assistant

September 2005 - December 2006 (Firm Closed)

. Provided legal assistance to two attorneys.

. Formatted and edited applications for U.S. filings in the U.S. Patent

Office.

. Prepared litigation notebooks for future matters. Reported same to

clients.

MORRISON FOERSTER, LLP, Tysons Corner, VA Patent Assistant

August 4, 2003 - September 2005

. Managed and cleared heavy docket calendar.

. Effectively and accurately prepared and filed a wide-range of legal

documents in the U.S. Patent Office, including non-provisional and

National Phase applications, Missing Requirements, Missing Parts, and

Responses.

. Obtained English translations of foreign documents and requests

drawings for filings.

. Communicated effectively with team secretaries and docketing

department of upcoming filings.

. Initiated communication in forwarding PTO actions to clients in a

timely manner.

. Drafted letters for attorney review.

Founded JANICE ROSIER COMMUNICATION SERVICES in October 1997 - July

2003.

Skilled professional in preparing and filing legal documents in support of

partners, associates and support staff in the arenas of patent, litigation

and bankruptcy law.

The following are assignments from various clients:

SECURED LEGAL SERVICES, Columbia, MD, Bankruptcy Law/ Contractor

JORDAN & HAMBURG, LLP, New York City, NY, Patent, Trademark and Litigation

VERNER LIPFERT, Washington, DC, Sports Law Secretary

BURNS, DOANE, SWECKER & MATHIS, Alexandria, VA, Patent Law/Litigation

Secretary

Names of additional clients furnished upon request

EDUCATION

QUEENS COLLEGE - Flushing, NY

Bachelor of Arts Degree - English/Writing

May 1985



Contact this candidate