Ip Paralegal Patent Prosecution

Maritza Acosta, *** St., Kew Gardens, Ny *****; *************@*****.***; 917-***-****

International Patent Administrator (permanent)

Armstrong Teasdale

September 2021 to January 2023

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.

Patent Patent Paralegal (contract/temp)

Suez Water Treatment

June 2020 to September 2020

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

Trademark Paralegal (contract/temp)

One Jeanswear Co.

June 2019 to November 2019

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 (contract/temp)

The McCulloch IP Law Firm

October 2018 - December 2018

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

Corporate Paralegal (contract/temp)

Village Center for Care, Inc.

May 2018 - August 2018

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 (contract/temp)

Bryan Cave

June 2017 - December 2017

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 (contract/temp)

Baker Hostetler

November 2013 - March 2015

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)

IP Paralegal (contract/temp)

Mintz Levin and IP Spring (contract/temp)

January 2011 - July 2013

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 (permanent)

Kaye Scholer

August 2003 - July 2009

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 Services

Docketing Programs : CPI, PATTSY Wave, Foundation IP (FIP), IP Manager, Medi-Reg, Memotech, Inteum, WebTMS; Interested in advancing skills in AI tools

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

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