IP Patent Paralegal

New York, NY 

Summary

The Patent Paralegal works effectively and collaboratively with attorneys across offices, clients, and foreign associates to prosecute and maintain U.S. and foreign patent portfolios. The Patent Paralegal also works with attorneys both in and outside the IP Department on due diligence, transactional, and/or special projects. 

Responsibilities

Docket

Works closely with attorneys, clients and foreign associates to remind them of deadlines, obtain instructions and meet filing deadlines. Monitors docket on a daily basis and communicates updates/changes to Docketing. Clears docket in advance of vacation and communicates any issues or alternative arrangements to Docketing and Department Manager. When unexpectedly absent, notifies Docketing and Department Manager of any urgent deadlines. Assists new hires with understanding. Reviews mail for accuracy against CPi. 

Foreign Prosecution

Prepares and files PCT Applications, Chapter II Demands, Requests for 92bis, Responses to Invitations to Correct Defects and foreign national phase applications. Responds to WIPO communications and corresponds with foreign associates to facilitate ongoing prosecution of foreign patent applications. Prepares and files formal papers for each national phase patent application filed, adhering to the rules and requirements of the specific country. Coordinates filing of patent applications in non- PCT countries. Prepares and files translations and formal papers for each patent application filed, adhering to the rules and requirements of the specific country. Prepares lists of references to be cited in foreign countries and communicates same to foreign associates. Obtains instructions from client and coordinates filing of Requests for Examination. Obtains instructions from client and coordinates payment of grant fees and accumulative annuities. 

U.S. Prosecution

Prepares and files Information Disclosure Statements. Reviews references cited in related office actions for same. Review patent application prior to payment of Issue Fee ensuring all amendments have been entered, references cited in IDSs have been acknowledged etc. Proofreads issued patents and prepares Requests for Certificate of Correction. Prepares Assignments, Declaration, Power of Attorney and Statement Under 3.73b documents. 

Teamwork

Participates willingly and reliably. Demonstrates commitment to the team, the client and the firm. Contributes to a team culture where individuals work together and are comfortable expressing new ideas and raising concerns. Delegates tasks to junior team members clearly and in context, taking into account current workload and commitments and following up appropriately. Provides input to collaboratively develop an approach to delegated tasks. Manages junior team members’ project deadlines as well as overall project deadlines. Is solution-oriented and proactive. Provides constructive feedback and serves as mentor to junior team members, offering guidance to promote their development and sharing successes with other team members, attorneys and management.  

Training and Development

Attends and participates in professional development programs, department and paralegal meetings. 

Supervise Staff, Project Assistants and Temporary Staff

Provides guidance and supervision to junior members of the department as well as temporary staff. 

Timekeeping

Meets the Firm’s billable hours expectations and adheres to best practices for daily time entry for client work and eTime for attendance and time off requests. 

Service Excellence

Contributes to the Firm’s Service Excellence initiative to consistently improve its image internally and Displays professionalism, quality service and a “can do” attitude to internal   members/departments of the Firm as well as external clients and vendors via electronic and print correspondence, over the telephone and in-person.

Required Skills

• BA/BS preferred.
• Proficient in U.S. and foreign patent laws and procedures.
• Strong written and oral communication skills.
• Strong organizational skills and attention to detail.
• Proficient in Microsoft Office (Excel, Word, PowerPoint) and searching and docketing software.
• Ability to supervise senior project assistants and/or project assistants.
• Ability to track and process expenses.
• Ability to work overtime and travel.

Required Experience

• Three years of related work experience preferred.

Equal Opportunity Employer/Females/Minorities/Veterans/Disability

Assumes additional responsibilities as assigned