Certificate of Proficiency, Lengua Español - Cursos Internacionales @
Universidad de Salamanca
Rumit Kanakia is a Boston College Law School graduate, with several years of industry work experience as an engineer, business analyst and paralegal prior to law school. He is interested in intellectual property and corporate transactional work generally. He is admitted to practice in California and is a registered patent attorney with the United States Patent &
Rumit Kanakia is a Boston College Law School graduate, with several years of industry work experience as an engineer, business analyst and paralegal prior to law school. He is interested in intellectual property and corporate transactional work generally. He is admitted to practice in California and is a registered patent attorney with the United States Patent & Trademark Office. Rumit is currently working as a patent attorney at Mahamedi Paradice LLP in Campbell, CA.
Mahamedi Paradice LLP is a Northern Californian law firm that provides high-quality intellectual property counseling, with particular focus on patent law. Our goal is to help clients capitalize on their intellectual property, both to create a competitive advantage and to protect against the claims of others. Our firm represents clients in a wide range of industries and at all stages of growth, from venture-backed startups to public companies. We assist our clients in acquiring intellectual property rights throughout the world.
Outside of the legal sphere, Rumit handles client relations and business development for Rushi Corporation, an indenting house in Mumbai, India managing such operations remotely from California. Rumit is passionate about the culinary arts and is always learning more about food from different parts of the world. An avid traveler, he enjoyed some extensive time off traveling in Europe after law school. He enjoys football, cricket, and cycling. He is fluent in Hindi and Gujarati and can converse in Spanish.
The information in this profile are based solely on my information and do not represent anybody else's views.
Patent Attorney @ From October 2014 to Present (1 year 3 months) San Francisco Bay AreaVice President - Business Development @ From August 2014 to Present (1 year 5 months) Mumbai Area, IndiaAssociate Attorney @ Practice focused on patent litigation and prosecution with Kenyon & Kenyon LLP’s electrical and mechanical engineering group. Provided clients with prosecution and litigation services in a wide variety of technology areas within the electrical and computer industry.
IP Litigation - Performed various litigation tasks as a team member on different ongoing litigation matters including:
o Drafted answers to complaints, motions to transfer, discovery requests, infringement contentions, claim charts, subpoena notices, accused product analysis, fact investigation and patent analysis memoranda
o Reviewed and wrote analysis memoranda on patent and non-patent prior art references
o Compiled statistics on court and PTAB decisions on covered business methods post grant review and motions to transfer
o Conducted document privilege review and coordinated document productions
o Researched case law and write legal memoranda in areas of prior art interpretation, post grant review procedures, trademark and unfair competition, preliminary injunctions and other litigation issues.
Patent Prosecution -
o Drafted responses to office actions for various computer hardware, software, communication systems, audio systems, semiconductor manufacturing, electronic design automation, robotics, business methods and medical device patents.
o Advised and coordinated office action responses with foreign associates in Japan, New Zealand, Australia, Canada and the European Patent Office. From March 2013 to August 2014 (1 year 6 months) San Francisco Bay AreaSummer Associate @ • Researched various issues and case law in connection with on-going litigation on patent infringement cases.
• Revised & drafted sections of Kenyon’s “Unfair Competition and the ITC” book’s 2011 edition – used industry-wide.
• Drafted an appeal brief in reply to an office action in an on-going patent application.
• Researched case law and assisted in drafting a handbook on contributory infringement law and history.
• Participated in various seminars on claim drafting, patent prosecution and patent infringement & litigation. From June 2011 to July 2011 (2 months) San Francisco Bay AreaBusiness Law Intern @ As part of Exemplar's legal team, I did substantive research in the areas of contract law, corporate law and intellectual property law for various clients. From September 2010 to October 2010 (2 months) Greater Boston AreaLegal Intern @ • Researched and recommended efficient procedure flow for the compliance process of the Digital Millennium Copyright Act’s safe harbor provisions as it applies to Vistaprint’s web-hosting business.
• Drafted D&O Questionnaires for Vistaprint’s directors and officers as part of the annual proxy reporting process.
• Collaborated with the legal and finance teams on various parts of the definitive proxy report and the 10-K annual report filings.
• Assisted in review of contracts and agreements.
• Analyzed existing terms and conditions for the business and benchmarked it against competitors and other relevant businesses.
• Participated in meetings with in-house clients on a variety of business topics, including sessions addressing legal issues in new products and marketing initiatives. From June 2010 to August 2010 (3 months) Greater Boston AreaCorporate Paralegal @ • Provided in-house organizational support to attorneys in the Mergers and Acquisitions & Corporate Securities Group.
• Compiled and indexed documents related to business transactions, Performed Blue Sky research.
• Prepared Section 16 filings for all Section 16 Officers & Directors of Google Inc.
• Maintained compliance for all Google subsidiaries and filed annual reports with corporate departments of all 50 states.
• Researched information and obtained documents from public agencies. Used in-house databases to research name availability. Obtained filings from Department of Corporations and Secretary of State.
• Assisted in maintaining corporate records by preparing and updating shareholder and option lists using appropriate databases, preparation and organization of documents; coordinating closings of business transactions; business entity formation and maintenance, assisting with shareholder mailings and indexing and maintaining files.
• Assisted with closings by assisting in due diligence review of documents, preparing transaction books and assisting with mailings, experience working with attorney services in the filing and retrieval of business documents. From May 2007 to April 2009 (2 years) San Francisco Bay AreaParalegal @ Tasks included drafting transactional documents, assist in incorporating new corporations, filing statements with regulatory authorities, preparing due diligence materials, maintaining corporate records including stock and option ledgers and preparing transaction books From July 2005 to April 2007 (1 year 10 months) San Francisco Bay AreaERP Analyst @ Led and coordinated an ERP effort to determine the feasibility of low-cost foreign language documentation & reporting solution for the Automation & Network Solutions business. From June 2003 to September 2003 (4 months) Greater Atlanta AreaEnterprise Licensing Analyst @ Investigated and recommended on the acquisition, use and termination of enterprise software licenses. Advised the in-house legal department on technical issues concerning the licenses. From May 2002 to September 2002 (5 months) Greater Atlanta AreaBusiness Solutions Analyst @ Handled the Testing & QA using six-sigma for the Home Depot Kiosk Initiative for GE Energy Rentals From May 2001 to August 2001 (4 months) Greater Atlanta AreaHardware Engineering Intern @ Worked as a part of a 40-member reliability & design team for a microprocessor. Performed reliability checks for electro-migration as part of a design team for a copper-based ALPHA microprocessor using custom simulation and debugging tools. From August 1999 to December 1999 (5 months) Greater Boston AreaEngineering Intern @ Worked on VH-1 Executive Aircraft Flight Simulator Project. Presented the model at George Washington University. From May 1998 to August 1998 (4 months)
J.D., Law @ Boston College Law School From 2009 to 2012 Certificate of Proficiency, Lengua Español - Cursos Internacionales @ Universidad de Salamanca From 2009 to 2009 M.S., Management Science & Engineering @ Stanford University From 2003 to 2005 B.S., Computer Engineering, Highest Honors (Summa Cum Laude) @ Georgia Institute of Technology From 1998 to 2002 High School Diploma @ St. Mary's Ryken High School From 1997 to 1998 Leonardtown High School From 1996 to 1997 Rajhans Vidyalaya From 1985 to 1996 Rumit Kanakia is skilled in: Intellectual Property, Corporate Law, Emerging Growth Companies, Venture Financing, SEC filings, Mergers, Patent Prosecution, Patents, Legal Research, Trademarks, Due Diligence, Patent Litigation, Start-ups, Corporate Governance, Venture Capital