Intellectual Property Paralegal

Role Overview

• Provides organizational and practice specific assistance to attorneys in the IP Department
• Manages patent prosecution and trademark matters, including related research, analysis, docketing, and e-filing
• Supports the department with general administrative duties and special projects related to IP matters
• Manages and organizes U.S. & foreign patent and trademark docket and processes for multiple IP attorneys
• Prepares and files Provisional, U.S. Utility, Continuation, Divisional, Design, PCT & 371 US national stage applications, & reissue applications with the U.S. Patent and Trademark Office (USPTO)
• Files follow-on patent and trademark prosecution submission requirements such as response to office actions and issue fee payments with the USPTO
• Prepares and files PCT applications with the IB and USPTO
• Effects national phase entry of PCT applications
• Prepares client formalities for execution (e.g., Declarations, Assignments & Power of Attorney)
• Performs assignment searches, assignment recordings, and handles chain of title projects
• Docket management and calendaring requiring significant awareness of and sensitivity to time management and filing deadlines
• Manages and updates files with USPTO patent center database and prepares responses as needed
• Reviews, files, and prepares Information Disclosure Statements and accompanying documents
• Drafts shells for Office Action Responses
• Provides client management support by maintaining client portals, updating client status charts, running various client docket reports for portfolio analysis, and communication with clients regarding upcoming U.S. patent deadlines, requests for instructions, formalities reminders, and filings
• Calculates Patent Term Adjustments and processes payment of Issue Fees
• Corresponds with foreign associates, oversees payment of foreign associates' invoices, and prepares reporting letters to client
• Effects portfolio transfers and manages multi-client portfolios
• Files and assists in prosecution of design applications (including convention deadlines for filing abroad)
• Proofs and edits patent and trademark applications, formal documents, and office actions, and prepares office actions’ shell responses
• Meets all ethical and professional requirements of the firm and keeps up to date on all learning and development requirements at the firm
• Meets internal and external deadlines, and successful time management, including during periods of prolonged intense work during and after regular office hours
• Fulfills firm administrative responsibilities, including, but not limited to, timekeeping and billing requirements
• Assists with other department activities as needed, and performs additional duties and responsibilities as assigned

Requirements

• Bachelor’s Degree required
• Certificate in Paralegal studies from an accredited institution preferred; equivalent experience considered
• Certified Paralegal a plus
• Minimum 5 plus years of relevant work experience in a professional environment
• Law firm experience preferred
• Extensive knowledge of U.S. patent rules and procedure; knowledge of PCT and/or national laws of other countries
• Previous experience with Anaqua is a plus
• Copyright application filing experience a plus
• Proficiency in Windows-based software and Microsoft Office Suite, including Word, PowerPoint, Excel, and Outlook
• Exceptional computer skills with the ability to learn new software applications quickly
• Previous experience with Imanage is a plus

Benefits

• Health insurance with an optional HSA
• Short term disability
• Long term disability
• Dental insurance
• Vision care
• Life insurance
• Healthcare and Dependent Care Flexible Spending Accounts
• 401K
• Vacation
• Sick time
• Employee assistance program
• Voluntary accident insurance
• Voluntary life
• Voluntary disability
• Voluntary critical illness and cancer insurance
• Pet insurance
• Commuter and Transit programs may also be available in certain markets