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Intellectual Property / Patent Administration

Location:
Elmhurst, IL, 60126
Posted:
August 23, 2012

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EXPERIENCE

Beacon Hill Legal McAndrews Held & Malloy; Chicago, IL 4/2012-7/2012

Patent Prosecution Paralegal/Docketing –On contract basis with patent prosecution department, assisted with the incoming docketing and de-docketing of patent matters utilizing IP Master database. Processing of voluminous amounts of US and foreign patent matters. Daily utilization of USPTO PAIR system and foreign databases.

University of Illinois (Office of Technology Management –Technology Transfer) Chicago, IL; 1/2005 -3/2012

Patent Coordinator –Liaison with patent counsel, licensing staff and faculty inventors to facilitate preparation and filing of U.S. and foreign patent applications; and responses to office actions in timely fashion in cost-effective manner. Using patent / licensing database for timely docket and maintenance of patent matters; report generation to decision-makers. Coordinate pre-application prior art review. Streamlining patent decision processes, including decisions to maintain or abandon patents from portfolio. Firm knowledge of prosecution rules and procedural steps for U.S. and foreign (and Patent Cooperation Treaty -PCT) patent applications.

Independent Contractor 6/2004 -12/2004

On-line prior art searcher for a variety of company pre-patent application processes.

USG Corp. Research & Technology (Intellectual Property Dept.) Libertyville, IL; 8/1998 -6/2004

Patent Liaison – Developed and maintained patent portfolio (U.S. and foreign) and docket and annuity system (CPI) with timeliness and accuracy; running reports and data entry. Assisted IP attorneys in protecting Company’s proprietary technology. Acted as liaison with technical staff, attorneys, marketing, and manufacturing functions. Managed timely administration of Invention Record submissions and the invention review processes, and related meetings. Provided liaison between in-house counsel and outside counsel and inventors in procuring legal opinions and patent protection.

Greer, Burns and Crain, Ltd. (Intellectual Property law firm) Chicago, IL; 2/1998 -8/1998

Law Clerk part time –Assisted in the preparation and prosecution of patent applications; Performed legal research on patents, trademarks and copyrights.

Northwestern University

(Dept. of Neurobiology & Physiology) 9/1995 -1/1998 and 11/1992 -8/1994

Research Technologist –Coordinated undergraduate research projects. Conducted experiments in endocrinology laboratory to investigate hormone secretion and cyclicity.

(Dept. of Pathology and The Cancer Center) 4/1991 -11/1992

Research Technologist –Performed pancreatic cancer research studies and dietary modulation for PI.

Illinois Institute of Technology (Division of Toxicology, Life Sciences Dept.) 2/1990 -4/1991

Assistant Biologist –Performed gas chromatography and clinical pathology sampling; generated reports for Sr. toxicologists.

Hinsdale Federal Savings and Loan (Loan Dept.) 8/1988 -2/1990

Savings Counselor –Advised customers on account options.

EDUCATION

University of Illinois (Champaign-Urbana), BA, 1988 [Major: Philosophy][Minors: Chemistry & Biology]

The John Marshall Law School (Chicago), JD, 1998



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