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TRACY L. MORTON2645 Moyers RdSan Pablo, CA 94806Email: [email protected]: 510-901-9992
QUALIFICATIONSSkilled in both US and foreign patent prosecution; docketing (CPI, PATTSY, IP THOMPSON); IP Administration; Contracts Administration; legal document preparation; and document review. I am an experienced professional and self-starter. I work well independently, as well as part of a team.
EDUCATIONOnline Student: University of Phoenix – Business Administration Program1990-1992 St. Mary’s College – Paralegal Certificate1985-1988 University of New Orleans – Business Administration
EXPERIENCE11/2015 – present COMPASS CONSULTING GROUP – GENENTECH
Patent File Clerk; Patent Admin Floater
11/2015 – 04/2016 CARR & FERRELL LLPPatent Coordinator- Work with attorneys, legal staff and clients to organize legal documents, update template
letters and process client materials.- Review and upload US and PCT documents for e-filing with U.S.P.T.O.- Preparation of IDSs; formal documents; reporting letters to client.
10/2014 – 08/2015 Law Offices of Katherine AlfieriIndependent Contractor- Document review, indexing and document procurement project.
12/2013 – 10/2014 DERGOSITS & NOAH LLPLegal Assistant/Patent Docketing- U.S. and foreign patent docketing utilizing CPI patent management system.- Prepared and distributed weekly, monthly and special docket reports.- Provided back-up patent prosecution support to attorneys and secretaries.- Assisted with monthly billing activities, including preparation and editing pre-bills, and
generating and mailing final monthly invoices.
09/2013 – 11/2013 NELSON LEGAL – BIO MARINTemporary Assignment – Legal Assistant Patent Docketing- U.S. and foreign patent docketing utilizing CPI patent management system. - Document and file management; and assisted paralegal with projects as assigned.
01/2013 – 08/2013 EXECUTIVE ASSISTANT – DE VIZ ENTERPRISESTemporary Assignment - Executive Assistant- Executive Assistant to the Principal of De Viz Enterprises. - Drafted memos and correspondence to clients, partners and agencies; receptionist duties;
made travel arrangements; scheduled meetings; prepared and organized presentation materials; managed expense reports.
07/2011 – 02/2012 THE ECLIPSE GROUP LLPExecutive Legal Assistant/Patent Paralegal- Provided administrative and paralegal functions of small office of law firm. - Reviewed and managed patent attorneys’ dockets.- U.S. and foreign patent prosecution filings, including e-filing U.S. and PCT documents.
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- Prepared reporting letters to clients; maintained client portfolio summary reports; instructed foreign associates.
- Annuity and maintenance fee review and payments.
12/2007 – 05/2009 JONES DAY LLPPatent Prosecution Paralegal- Prepared Information Disclosure Statements (IDS); prior art comparison reports; formal
documents; patent portfolio review and status updates; electronic patent research; sequence listings.
- Communicated with and replied to foreign associates at the direction of attorneys. - Assisted with client transfer-in and transfer-out projects; and other projects as assigned by
working attorneys within the Patent group.
02/2007 – 11/2007 FIVE PRIME THERAPEUTICS, INC.Patent Paralegal/Contract Administrator- U.S. and foreign patent prosecution, including preparation of documents; e-filings; and
docketing utilizing CPI.- Reviewed and managed patent attorneys’ dockets.- Prepared and maintained company template agreements.- Prepared first drafts of agreements, including research, consultant, confidentiality and
material transfer agreements.- Implemented a contract tracking system utilizing JIRA, enabling the legal department to track
and monitor contract status and progress.- Organized and managed the legal department’s electronic and physical documents, including
patent files, contracts, invention disclosures, and lab notebooks.
03/2006 – 08/2006 LAW OFFICES OF JAMES R. CYPHERPatent Paralegal- Patent docketing utilizing PATTSY patent management system.- Drafted and finalized letters to clients and to foreign associates relating to ongoing patent
prosecution matters.- Prepared client status reports; and performed patent research as requested.
05/2004-11/2005 MORRISON & FOERSTER LLPForeign Filing Specialist- Foreign patent prosecution, including e-filing PCT documents; instructing foreign associates
re national and regional phase filings, and re ongoing foreign patent prosecution.- Reviewed and monitored foreign docket, acting on action items relating to foreign patent
prosecution for my assigned clients.- Preparation of foreign cost estimates to clients utilizing Global Estimator.- Responsible for special projects as assigned by the managing attorney, and for the daily
reporting to clients of actions taken involving their foreign files.
01/2002-02/2003 XENOGEN CORPORATIONIP Administrator- Managed company’s IP Portfolio, including U.S and foreign patent and trademark docketing
utilizing CPI. - Managed foreign annuity/maintenance fee payments.- Communicated with and instructed U.S. and foreign associates.- Drafted, negotiated and finalized standard company agreements and contracts, including
consultant, confidentiality and research materials transfer agreements.
07/1996-12/2001 ONYX PHARMACEUTICALS, INC.Sr. Patent Paralegal- Managed company’s IP Portfolio, including U.S. and foreign patent and trademark
prosecution and filings; U.S. and trademark docketing utilizing CPI; and preparation of sequence listings utilizing PatentIn.
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- Reviewed and managed patent attorneys’ docket.- Managed U.S. and foreign annuity payments.- Communicated with and instructed foreign associates.- Drafted, negotiated and finalized standard company agreements and contracts, including
consultant, confidentiality and research materials transfer agreements.- Organized the agenda of the patent committee; recorded and reported the minutes and
decisions made during the meeting; including assembling and distribution of meeting materials.
3/1993-6/1996 FLISLER, DUBB, MEYER & LOVEJOYPatent Prosecution Secretary- Patent secretary supporting a Senior Partner and 2 junior associates.