Property Administrator Paralegal
Resume:
Peekskill, NY *****
914-***-**** (cell phone)
**************@*****.***
KENROY A. BROWNE
Currently, I work as an Intellectual Property Administrator. I have over 20 years of patent prosecution experience with both U.S., PCT and foreign prosecutions, working in a law firm environment. My experience includes, but is not limited to the following:
LADAS & PARRY LLP July 2007-Present
Intellectual Property Administrator New York, New York
U.S. Patent Jurisdiction:
- Preparing of formal documents (Power of Attorney, ADS, Oath/declaration, Assignment, PCT Safe Request, and Transmittal) for electronic filing of utility, plant, design, divisional, continuation, continuation-in-part (CIP), and 371 PCT national phase patent applications.
- Drafting of new design application
- Reviewing of new application specification, claims and abstract for accuracy, and format application in
accordance to USPTO filing guidelines
- Preparing and filing of new U.S. patent application, including executed required formal documents, and recordation of the assignment
- Preparation and filing of Information Disclosure Statement (IDS), including searching of references through various online patent search engines (such as USPTO Patent Center, Espacenet, etc.)
- Preparation of Preliminary Amendment for U.S. 371 national phase, divisional, continuation and CIP
applications
- Review correspondence issued by USPTO, including filing receipt, formality request, and Office Action and report to client
- Implementing a checking system to ensure official documents are correct, such as official filing receipt and notice of recordation of assignment, and request correction of any discrepancy
- Resolve issues raised in formality request and Office Action through dialog with client and USPTO to file appropriate response
- Communication and interface with clients, inventors, venders, and USPTO to identify and resolve patent related issues
- Keep up to date with any change in procedures with USPTO electronic filing, and train employees on how to use new USPTO electronic platform
- Order formal drawings, certified priority document, and file history when required
- Implement and update check list with notice of allowance to ensure all formality requirements are fulfilled, and preparing of the allowed claims to report to client, as well as reviewing notice of allowance for possible patent term adjustment and file request for same
- Implement procedures to ensure issued patent are reviewed for accuracy, and to file certificate of correction to correct any discrepancy
- Dailey downing of official actions issued through USPTO PAIR, docket USPTO actions to the responsible attorneys, and report actions to attorneys
- Implement procedures to ensure pending deadlines are docketed and follow up actions are taken to ensure actions are timely handled, including updating and running of weekly dockets for attorneys and support staff to stay abreast of the matters they are assigned to handle in a timely manner
- Updating of in-house database of new USPTO patent rules
- Supervise and train in-house U.S. patent support staff
- Create and update USPTO training manual for support staff
- Docketing and coordinating payment of patent maintenance fee with outside vendors
- Prepare monthly progress reports for partners on the number of cases filed/dispatched
Foreign jurisdiction:
-Set up and maintain online account to enable electronic filing of PCT application and responses directly with the WIPO/International Bureau
-Prepare and file response to PCT Invitation to Correct Defects and other formality requests
-Reviewing of PCT correspondence, including search report and written opinion and docket accordingly
-Communicate with WIPO and foreign agents to identify and resolve patent related issues
-Set up and maintain online electronic filing of European Community design application directly with OHIM
-Implement and update procedure for dispatching foreign applications to associates and agents for filing, ensure formal documents are docketed and timely provided, reporting of filing to client, and ensure that all actions are docketed and timely responded to, including Office Actions and any other requirements set forth by foreign patent offices
-Preparation of Section 13 Response to Israel and India Notifications, including list of the corresponding applications and send to agents for filing
-Implement procedures and guidelines to ensure certification and legalization of foreign documents (power of attorney, assignment, certificate of incorporation, etc.) are timely obtained
-Updating of in-house database on new foreign patent rules in various countries
-Create and update manual of foreign filing procedures for training support staff
-Supervise and train in-house foreign patent staff
In addition, I have introduced incentive programs, such as free staff breakfast and Christmas gift exchange, among support staff to increase staff moral and communication. I have also introduced conducting regular meetings with support staff and partners to evaluate procedures, progress, and any other issues pertaining to the work environment
OSTROLENK, FABER, GERB & SOFFEN, LLP 2006-2007
Foreign Patent Paralegal New York, New York
My responsibilities at this firm mainly entailed preparing patent application to dispatch to foreign agents for filing in foreign countries, to ensure formal documents and official actions are docketed and timely attended to, and interface with clients in connection with formal documents, responses to office action, and the legalization of formal documents, where required.
LACKENBACH SIEGEL LLP 2004-2006
Senior Patent Paralegal Scarsdale, New York
My responsibilities at this firm were basically the same to my current position in relation to patent filing, including foreign filing. However, most of the U.S. filing were done through express mail instead of online filing (pre-USPTO PAIR electronic filing).
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP 2000-2004
Patent Paralegal Stamford, Connecticut
This position was also similar to my current position in relation to patent filing, including foreign filing. However, most of the U.S. filing were done through express mail instead of online filing (pre-USPTO PAIR electronic filing).
Skills: I am an effective communicator, verbally and in writing. I believe I possess excellent analytical, management/supervisory, and organizational skills. I am detail oriented and work well in a team environment but can also work effective independently. My computer knowledge includes, proficient in Microsoft Office Suite, web-based applications, and other computer programs, including Excel, and various electronic patent filing programs
Education: Hofstra University – Maurice A. Deane School of Law – Long Island, New York 2018-2020
Master of Arts – Health Law and Policy
Mercy College, Yorktown Heights, New York 1996-2000
Bachelor of Science - Criminal Justice (3.5/4.00 GPA)
Other: Yorktown Zoning Board of Appeals 2001-2004
(Recording Secretary) Yorktown Heights, NY
Recording of Minutes of Public Hearing and drafting of Board’s decisions
Activities & Honors Mercy College Dean’s List
Vice President of the Mercy College Criminal Justice Club (1997-2000)
Hofstra University – Maurice A. Deane School of Law Honor Roll 2018-2020
Organization President of the MSS/SJCM Alumni Association of North America (2018-to present)
Contact this candidate