Patent Prosecution Paralegal

New York, NY

Summary

An AmLaw law firm with nearly 300 attorneys nationwide, has an opening in its Intellectual Property department for a Patent Prosecution Paralegal. The ideal candidate will be responsible for providing paralegal services to Intellectual Property partners, associates, and on an as needed basis for other departments and staff members. 

Duties and Responsibilities

US Prosecution

• Responsibilities in US prosecution include preparation and filing all PTO filings and communications including, but not limited to, new applications, Office Action responses, Information Disclosure Statements, assignments and related ownership transfers, formal drawings, responses to USPTO notices, issue fee payments, and maintenance fees.
• Responsibilities in Foreign prosecution include preparation of new foreign applications, attending to foreign requirements specific to each country, foreign assignments and related ownership transfers, communications with foreign associates and payment of annuities.
• Attending to all interim communications received from the U.S. Patent Office and foreign firms.
• Reporting of all patent related filing and communication to clients from filing to issue.
• Monitoring of deadlines, including convention reminders for U.S. utility applications, and National Stage deadlines.
• Handle all incoming U.S. and foreign patent-related correspondence.
• Other projects/responsibilities as assigned. 

Qualifications

• Requires a 4-year degree
• A minimum of 5 years of patent prosecution experience
• Must be a team player with the ability to also work independently
• Excellent organizational and communication skills, exhibit a positive, helpful attitude and the ability to maintain confidential information; exercise good judgment and follow through on assigned tasks.  The qualified candidate must be able to hit the ground running with little training
• The Patent Prosecution Paralegal must have knowledge of both U.S. and foreign prosecution, and have experience in electronic filing at the USPTO