Experience

NexaQ.

• United States
• IT Services and IT Consulting
• 1 - 100 Employee

• Patent Paralegal

  • Mar 2023 - Present

  • Performing prior art search• Drafting invention disclosure forms for patent application filings• Managing IP portfolio in-house in quality engineering, data and analytics and cyber security• Docketing due dates and managing deadlines• Liaising with law firms to file patents in the US, Canada, Europe and internationally• Interacting with researchers and professionals to draft patent applications and building IP• Getting cost estimates for filing patent applications internationally

• Patent Paralegal

  • Mar 2023 - Present



Bereskin & Parr LLP

• Canada
• Law Practice
• 100 - 200 Employee

• Patent Paralegal

  • Jun 2022 - Mar 2023

  ▪ Preparing and filing patent applications ▪ Preparing and filing patent applications ▪ Preparing and filing all requires declaration and assignment documents ▪ Reviewing and reporting office actions, notices of allowance, change of ownership information and various recordals in the Patent Office ▪ Maintenance of deadlines and entering dockets ▪ Maintaining due dates in docketing system and sending reminders to clients regarding deadlines ▪ Client reports including, but not limited to, advertisement, registration fee notice, Canadian, U.S., and international registration certificates, cost estimates ▪ Time fee entries in accounting system ▪ Maintain and enter disbursement for official filings ▪ Knowledge and experience in utilizing Patricia file management system and Aderant Accounting system



Fasken

• Canada
• Law Practice
• 700 & Above Employee

• Intellectual Property Paralegal (Patents, Trademarks, Litigation)

  • May 2021 - Jun 2022

  ▪ Performing conflict searches, preparing engagement letters and opening new client matters ▪ Managing deadlines for patents, industrial designs, trademarks & litigations ▪ Analyzing patent office correspondence, docketing and reporting ▪ Preparing and filing new national phase and regular patent applications, response to office actions, request for examination, maintenance fees in Canada and foreign patent offices, preparing new trademark applications, Nice classification responses, coordinating and managing litigations etc. ▪ Pattsy database, docketing time, posting foreign associate invoices, billing and resolving all kinds of accounting issues ▪ Advising team on managing due dates, patent and trademark prosecution issues ▪ Preparing draft responses and reporting various patent and trademark office correspondence



MacRae & Co

• Ottawa, Ontario, Canada

• Senior Patent Paralegal

  • Dec 2020 - May 2021

  ▪ Managing client IP portfolio ▪ Liaising between professionals, clients and other team members in all aspects of IP ▪ Opening new files, saving client emails and advising clients in a timely manner ▪ Docketing, managing and ensuring all kinds of patent office correspondence is handled in proper manner ▪ Managing due dates in a timely manner and managing the client’s IP portfolio ▪ Preparing and filing all kinds of correspondence with the patent office in Canada and US like Statement of Entitlement, response to office actions, assignments, voluntary amendments, voluntary submission of art, ordering file wrappers, declarations and affidavits with patent office, maintenance fee payment, request for examination & final fees during the prosecution or post grant and liaising with patent offices and professionals for any errors and omissions ▪ Follow-up with clients for instructions to office actions ▪ Billing in a timely manner and updating standard instructions as and when required ▪ Managing in-house DocketTrack database and advising team members for any docketing issues ▪ Experience with MS office-WORD, Excel and Power point etc. ▪ Ability to work in both paper and paperless environment ▪ Strong attention to detail and ability to work in a busy work environment ▪ Provided support and participated in projects for transition to paperless work environment



PCK Intellectual Property

• Canada
• Legal Services
• 1 - 100 Employee

• Intellectual Property Manager

  • Jan 2020 - Sep 2020

  ▪ Preparation and filing of patent, industrial design and trademark applications in Canada, US, EP and internationally ▪ Coordinating with professionals, support team and clerks in delivering quality work to clients and maintaining dockets in a timely manner ▪ Preparing new workflows in Wikipedia and updating existing workflows as and when required ▪ Supervising the workflow of all team members and ensuring proper documentation and managing patent office filings ▪ Preparing and filing documents required for litigation and diarizing events in a timely manner ▪ Monitoring Errors and Omissions and taking care of them in a timely manner ▪ Providing training to existing team members and new team members in all aspects of prosecution and in-house database management ▪ Preparation and filing all kinds of patent office correspondence like office action responses, assignments, declarations and any correspondence with the patent office and following up with patent office as required ▪ Liaise between clients and patent office as and when required and professionals and team members ▪ Managing due dates and generating automated reported letters using Patricia ▪ Coordinating with team members with respect to workload issues and assisting in case of over work loads ▪ Docketing professionals time and billing in a timely manner



Marks & Clerk Canada

• Patent Paralegal

  • Mar 2015 - Jan 2020

  - Managing IP portfolio within the firm and handling prosecution, filings, renewals of patents and industrial designs in Canada, US, EP and Internationally - Filing Declarations, Assignments, PPH request, response to office action, certificate of correction, amendments, voluntary submission of art and any other documents as required - Analyzing patent office and client correspondence and taking necessary action - Preparing client reports and involving in direct client interaction - Managing professionals schedule, arranging meetings and travel arrangements - Filing responses and amendments for office actions and drafting letters for all kinds of patent office correspondence - Opening files, Invoicing, time entry, due date management and maintaining bring forward system - Managing patent portfolio in Canada and internationally by coordinating with foreign attorneys in a timely manner - Searching patents, trademarks, legal research, preparing reports and status updates



H&M, Patent & Trademark Agents

• IP Law Clerk

  • Jun 2012 - Feb 2015

  - Filing and managing client portfolio of Patents, Trademarks and Industrial Designs with CIPO, USPTO, EPO and in international patent and trademark offices - Ability to work with all kinds of intellectual property law from start to finish - Docketing and due date management - Drafting and proof reading legal documents - Assignments, Power of Attorney and Licensing documents - Ability to work independently and in a team environment - Individual working capability and excellent business communication skills - Excellent research skills in pharmaceutical, biotechnological and chemical areas - Drafting and proof reading patent specifications, claim analysis and response to office actions - Excellent interpersonal skills to collaborate and work effectively with internal and external contacts - Strong judgment and ability to resolve issues effectively - Strong priority-setting skills and effective organizational skills to complete tasks and meet deadlines; attention to detail - Strong computer and administrative skills; knowledge of Microsoft Word, Excel and PowerPoint - Analytical skills



Laila Nutraceuticals

• 1 - 100 Employee

• Manager - Intellectual Property & Legal

  • Feb 2007 - May 2012

  -> Maintain IP portfolio in-house -> Drafting and proof reading assignments, contracts, licensing documents (exclusive license and non-exclusive license agreements) and other legal documents for use within the company and for filing with the patent office -> Instructing domestic and foreign associates to prepare and file patents and trademarks -> Interact with researchers and external counsel and contribute to protection of IP -> Prioritize work and manage IP by coordinating with attorneys and scientists -> Perform infringement analysis, interpretation of claims and patentability search -> Experience with MS Office Suite