IP Patent Paralegal

Role Overview

• Assist, prepare and file legal documents with USPTO and other international patent offices electronically (e.g. WIPO) for both PCT and national entry patent applications.
• Stay up to date regarding filing requirements in both the USPTO and other international patent offices.
• Correspond with foreign counsel and, under the guidance of the attorney, provide instructions regarding international applications, registrations, renewals, notices, affidavits, declarations and other necessary documentation in their respective jurisdiction which ensures compliance with all filing requirements and regulations.
• Prepare and file Information Disclosure Statements, including managing the review of patent families and similar applications;
• Prepare formal documents, IDS citation forms, and submission of foreign and non-patent literature references; and file the documents with the USPTO.
• Complete client checklists, where required, to ensure all necessary documents have been filed and procedural steps have been completed.
• Understand and follow the IP Practice Group’s procedures and record-keeping policies, including the use of NetDocuments for document management.
• Communicate directly with clients and attorneys regarding patent matters, including notifying clients and attorneys regarding due dates, obtaining required signatures and documentation, and providing updates.
• Utilize CPi Docketing software and review reports generated from CPi.
• Assist the attorneys in preparing for meetings, hearings or mediations.
• Proofread documents prepared by attorneys.
• Accurately record time worked and enter time and description into time and billing system in a timely manner.

Requirements

• Associates degree or Bachelor’s degree with a major in paralegal studies
• A Bachelor’s degree with an unrelated major, and have:
• A certificate from an ABA approved paralegal training program specializing in the area for which the candidate is being considered;
• Two years’ experience in the area of specialization for which the candidate is being considered or other comparable experience;
• Unique qualifications, experience, or training which fill a specific need within FBT Gibbons.
• Minimum of 3 years of Patent Intellectual Property Paralegal experience.
• Prior experience with docketing software.
• Experience working in CPI and PracticeLink is a plus.
• Accuracy, attention to detail, and thoroughness.
• Strong organizational skills, with the ability to prioritize and work on multiple projects with time constraints and interruptions.
• Ability to work both collaboratively and independently in a deadline-driven environment.
• Proficient with technology, including Microsoft Office (Word, Excel, Teams, Outlook).
• Excellent client service skills, both with internal and external clients.
• Ability to communicate information in a clear, well-organized, and professional manner, both verbally and in writing.

Benefits

• Health care coverage (medical, dental, and vision)
• Life insurance
• Short
• and long-term disability
• Paid parental leave
• Employee wellbeing and EAP programs
• Paid time off
• 401(k) retirement plan with employer matching and profit-sharing