Intellectual Property Paralegal

Provide substantive support to the IP practice group on a variety of projects; interface with clients, the PTO and other entities in the prosecution of client patents and the preparation and filing of trademarks.

Responsibilities (include but not limited to): 

• Prepare U.S. non-provisional and provisional applications and international filings
• Prepare Information Disclosure Statements and cite references from foreign applications in related U.S. cases
• Familiarity with USPTO document changes
• Prepare responses to pre-examination USPTO Office Communications
• Preparation of inventors’ letters and oaths/declarations
• Review application file in preparation for payment of issue fee and payment of issue fee
• Prepare and file US and international assignments
• Prepare and file formal drawings and sequence listings
• Correspond with clients regarding annuity fee payments
• Perform legal research via Corsearch and other online services
• Prepare and file trademark applications and amendments and responses to office actions for trademark applications under the supervision and direction of patent agents and attorneys
• Prepare procedural amendments and responses to office actions for patent applications under the supervision and direction of patent agents and attorneys
• Interface with clients, foreign associates and the USPTO under the supervision and direction of patent agents and attorneys
• Review and organize IP transactional due diligence materials
• Reconcile vendor invoices
• Interact with other Paralegals, Project Assistants and other support personnel
• Annually log at least 1500 billable hours

Qualifications

• Bachelor’s degree required; ABA-approved paralegal certificate also preferred
• Five or more years of law firm experience in an Intellectual Property practice
• Experience working with a variety of IP related databases and applications
• Proficiency in navigating both the PAIR system and the USPTO database
• Knowledge of Microsoft Windows, Word, Outlook and Excel; Internet experience
• Excellent organization and research skills
• Excellent verbal and written communication skills
• Detail-oriented and able to work effectively under pressure
• Ability to work independently and handle multiple tasks simultaneously
• Willing to work overtime
• Ability to lift 25 pounds