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Ip Paralegal Patent Prosecution

Location:
New York, NY
Salary:
TBD
Posted:
December 30, 2023

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Resume:

`Maritza Acosta, New York, NY, ad2buj@r.postjobfree.com, 917-***-****

SUMMARY OF SKILLS: E-filing; patent and trademark prosecution. Intellectual property docketing; drafting and organizing USPTO and WIPO transmittals, i.e., utility applications, PCT’s, IDS’s and all related transmittals. Knowledge of USPTO and WIPO rules and procedures. Use of computer websites, programs and applications. Conduct legal research, trademark searches, and document and database management. Contract review and drafting of nondisclosure agreements.

WORK HISTORY

International Patent Administrator, September 2021 to present (permanent)

Armstrong Teasdale

• Managed the international patent prosecution docketing using CPI. Prepared and e-filed ePCT's. Utilized the USPTO, WIPO, ePCT, Espace.net, PatentScope, and other IP-related websites. Worked on special projects including Excel charts for status checks, India related Country status, search for granted claims and more. Liaised with foreign associates daily regarding all IP filings in various countries. interfaced with IP team, staff, outside counsel. Extensive use of FileSite, CPI clusters and various docketing strategies. Conducted Internet research related to patent data. Drafted reporting letters to clients and foreign associates.

IP Patent Paralegal, June 2020 to September 2020 (contract/temp)

Suez Water Treatment

• Managed the international patent prosecution docketing using Memo-Tech. Assisted in drafting patent transmittals, non-disclosure agreements and maintained the patent docket.

Trademark Paralegal, June 2019 to November 2019 (contract/temp)

One Jeanswear Co.

• Launched a worldwide chain of title and name change in over 100 countries for all trademarks. Prepared and e-filed trademark documents in the USPTO, including Use and ITU applications, Statements of Use, responses to office actions, renewals and all associated documents. Maintained and updated the docket using Web-TMS.

IP Paralegal, October 2018 - December 2018 (contract/temp)

The McCulloch IP Law Firm

• Prepared and e-filed U.S. Copyright applications, which included organizing large groups of professional NFL photographic media, entailing detailed work with media file metadata, including photograph resizing to rigid specs. This deadline-driven work utilized highly structured Excel tables

IP Paralegal, May 2018 - August 2018 (contract/temp)

Village Center for Care, Inc.

• Assisted multiple executives with drafts/reviews of contracts and board resolutions. Maintained contract database management system by tracking contracts and vendor materials using Medi-Reg. Managed the contracts portfolio including drafting NDAs, affidavits and purchase agreements

IP Paralegal, June 2017 - December 2017 (contract/temp)

Bryan Cave

• Complete preparation, e-filing and management of USPTO patent, trademark and copyright applications. Researched prior art references to all Life Sciences and Medical Science patent applications, including Information Disclosure Statements with over 250 cross-referenced patent families. Maintained the IP docket using PATTSY

IP Paralegal, November 2013 - March 2015 (contract/temp)

Baker Hostetler

• Prepared and e-filed patent and trademark applications and documents in the USPTO. Assisted with end-to-end Uniform Domain Name Resolution Policy (UDRP) complaints and processing applications, ordered certified copies of priority documents, and effectuated legalization where required.

IP Paralegal, January 2011 - July 2013 (contract/temp)

Mintz Levin and IP Spring

• Prepared and e-filed trademark documents in the USPTO, including Use and ITU applications, Statements of Use, responses to office actions, renewals and all associated documents; managed the trademarks using CPI. Complete preparation, e-filing and management of Google patent applications on behalf of IP Springs. Maintained the patent docket using Foundation IP.

IP Paralegal, August 2003 - July 2009 (permanent)

Kaye Scholer

• Implementation of all new processes for executive and IP paralegal support teams, as well as vendors. Prepared and electronically filed all prosecution documents in the USPTO and WIPO. Maintained all IP records and database. Prepared all documents, including Utility, PCT’s, National Phase, and other documents. Prepared assignments, declarations, amendments and office actions, responses to missing parts, terminal disclaimers, RCE’s, continuations & divisional applications. All related documents. Researched prior art references, non-patent literature and related references for drafting IDS's. Managed US and foreign IP docketing utilizing PATTSY docketing programs

COMPUTER EXPERIENCE

• Patent : USPTO, WIPO, ePCT, EFS WEB, PAIR, PTAB, EPAS, Espacenet, PatentScope, Patent Center Trademark: TEAS, Global Search formerly TESS, TARR, TSDR, ETAS, TPAS, TTAB, ESTTA, TTAB, TTABVUE, Saegis, Corsearch,

• Trademark Watch ServicesDocketing Programs : CPI, PATTSY, Foundation IP (FIP), IP Manager, Medi-Reg, Memotech, Inteum, WebTMS

• Desktop Document Tools : Adobe Acrobat Pro & MS Office, Excel, Outlook, IPDAS, FileSite, DeskSite, DTE, Elite, Chrome River, IPDAS

• Litigation Research Websites : NY State Courts eFiling, Shepards, The Bluebook (kbb.com), Concordance Legal Research Engines & Databases : Westlaw, Lexis/Nexis, PACER, FindLaw, Dunn & Bradstreet Hoovers

EDUCATION

• University of Colorado, Bachelor of Arts in English and Sociology

• Santa Clara University, ABA Approved Paralegal Certification

• Thomas Jefferson School of Law, candidate for a Masters of Science in Law, compliance law and legal research and writing



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