Patent Prosecution Paralegal

Essential Duties

Foreign Filings

• Coordinate and file all matters outside of the US.
• Communicate and coordinate with foreign counsel.
• Ensure responses are correctly completed in a timely manner.

US Prosecution

• Coordinate IDS preparation and tracking of references.
• Review the Notice of Allowance prior to payment of issue fees.
• Assist in preparation of declarations, certificates of correction and corrected filing receipts.
• File individual actions as needed.

Docketing

• Oversee tracking and maintenance of individual dockets.
• Update docket and ensure it is accurate.
• Client reporting of incoming correspondence and completed tasks.
• Process client intake and transfer-out projects.
• Prepare status reports and other client-requested reports/tasks.
• Maintain client correspondence.
• Assist in the performance of prior art searches and reports related to due diligence and clearance studies.

• Must be able to handle special projects as requested.
• Must be willing to assist other team members as needed.
• Perform other related duties as needed or assigned.

Reporting Relationship

The IP Paralegal reports directly to the Office Administrator or the appropriate Human Resources Business Partner and supports the assigned attorneys in the practice area.

Qualifications

Knowledge/Experience:

The IP Paralegal must have a minimum of three years of proven progressive patent prosecution experience and should possess the ability to manage a multitude of tasks simultaneously in an organized manner. Must be knowledgeable in USPTO and foreign filing processes. This employee should be able to work independently with minimal supervision. This individual must be able to accurately record billable and non-billable time.

Skills:

The IP Paralegal must possess strong verbal and written communication skills. Must be able to demonstrate these skills at all levels in the firm. Must have the ability to conduct legal research and translate difficult concepts into simple terms. Strong computer/technical proficiency is a must with an intermediate knowledge of Microsoft Word, Excel and PowerPoint.

Education:

The IP Paralegal must have a paralegal certification from an ABA approved school or bachelor’s degree in a field related to law, administration or liberal arts.