IP Patent Paralegal
The IP Patent Paralegal will work under the direction of the IP Practice Manager. IP Patent Paralegal is a member of the IP Practice Section and is assigned to specific matters, clients, projects and/or attorneys. The Patent Paralegal is to assist the IP Practice Section to function in a consistent productive manner; is responsive and ensures that all documents received from clients, foreign agents, U. S. Patent and Trademark Office and other government agencies have been responded to timely, accurately, and all other day to day responsibilities are being met under established policies and procedures; while exercising discretion and confidentiality in maintaining contact with clients, attorneys and staff. There is an annual billing requirement of 1500.
- Ensures that policies and procedures are being followed on a day to day basis in relation to assigned duties, including client special instructions and in accordance with established firm guidelines.
- Clears daily docket reports in accordance with established firm guidelines and notify the docket department of any inaccuracies.
- Reviews attorneys’ client information and ensures that addresses, special instructions are being followed in accordance with the clients’ standard operating procedures.
- Create and maintain electronic worksheets to assist attorney in managing client needs.
- Draft routine correspondence and/or formal documents for filing at the U.S. Patent and Trademark Office “USPTO” for attorneys and others as needed, proofread, photocopy, scan documents into the firm’s document management system and assemble correspondence as needed.
- Track and record client-billable time as required meeting minimum billable hour requirements.
- Draft responses, Information Disclosure Statements and other related prosecution documents relating to filing with the USPTO.
- Responsible for completion of the Notice of Allowance checklist and payment of Issue Fee.
- Responsible for maintaining and prioritizing work on a daily basis and communicate if unable to meet daily responsibilities.
- Utilize USPTO and other related government agency electronic resources effectively.
- Willingness and flexibility to work closely with all departments and others as needed.
- Provides back-up support to other team members as needed, including Patent Service Assistants and/or other IP Patent Paralegals if requested.
- Performs other duties as assigned.
- Monitor and follow-up on dates associated with the US and foreign docket, including clearing dates and providing follow-up with attorneys, clients and management in order to provide adequate time to respond.
- Responsible for working with attorneys in keeping abreast of all rules and regulations and procedures for filing US and 371 applications including all formalities related thereto.
- Responsible for creating and forwarding formal documents to the client within a certain schedule to reduce a back-log of work.
- Prepare all transmittal cover sheets, assignments, declarations, information disclosure statement, etc. for final review and approval by supervisory patent attorney and/or patent agent.
- Receive and act upon client instructions, including confirmation and/or draft response to client inquiries related to US, PCT and foreign applications.
- Provide support for Patent Trial and Appeal Board proceedings and appeals.
- Recordation of assignments and name changes in the U.S. and internationally.
KNOWLEDGE, SKILLS AND ABILITIES:
- Familiarity with US and international patent law, including inter-partes matters.
- Interpersonal skills necessary to communicate and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with courtesy and tact.
- Proficient in USPTO procedures and best practices, including working knowledge of Manual of Patent Examining Procedures and 37 Code of Federal Regulations.
- Ability to work under pressure while producing a high volume of information with attention to detail while producing an accurate document.
- Willingness and ability to accept changing assignments and priorities.
- Ability to compose, proofread and edit (e.g., punctuation, grammar, spelling) routine memorandums and correspondence.
- Proficient in Microsoft Office Products (Excel, Outlook, PowerPoint, Word)
- Strong organizational and administrative skills.
- Ability to search various websites in order to locate information in order to communicate with client or maintain accurate information in the firm’s various software applications associated with IP.
- Ability to provide quality client service to both internal and external clients effectively and professionally.
- Performs other duties as assigned.
- Ability to identify and analyze complex issues and problems and to recommend and implement solutions.
- Strong PC knowledge in order to utilize various online electronic filings with government agencies and to maintain worksheets for clients.
- Effective communication skills, both verbal and written.
- Ability to retrieve and carry items weighing less than 25 pounds.
At least five (5) to seven (7) years of combined comprehensive domestic and foreign patent prosecution experience, including docket management, application filings and prosecution in order to gain an understanding to provide support and planning that will ensure a high quality and accurate work product. College Degree is helpful or equivalent specialized training, i.e., paralegal studies from an ABA recognized program.