Intellectual Property Paralegal

Woodcliff Lake, NJ 

Summary

A boutique, global, European based, Intellectual Property law firm is looking for an IP Paralegal to join their US team in their Woodcliff Lakes, NJ office. The candidate will be responsible for providing high quality support on IP matters with a particular focus on managing the filing and preliminary prosecution of patent applications (PCT and Paris Convention) on a global level. They are looking for someone to join the team who has a strong work ethic, responsible and committed to their clients´ IP rights.

Responsibilities

Global Patent Prosecution

• Requesting preliminary patent searches and comprehensive search reports to local counsel.
• Preparing PCT and Paris Convention applications for its filing.
• Conducting preliminary prosecution for foreign patent applications and performing other assistant duties to support the patent team.
• Working with associates in preparing documentation for prosecution matters.
• Preparing correspondence to local and foreign associates and/or clients.
• Maintaining and monitoring patent database for deadlines and status checks.
• Communicating with local and foreign associates and clients regarding upcoming deadlines.
• Reviewing incoming correspondence from foreign counsel, updating deadlines and following up as necessary.
• Reviewing and processing foreign associate invoices as well as issuing invoices to third parties.
• Obtaining, reviewing and forwarding certificate of registration.
• Managing portfolio of patent annuity payments using docketing systems. 

Requirements

• Bachelor’s Degree or Paralegal Certificate is preferred but not a must.
• Previous paralegal experience, ideally within the patent practice.
• Advanced in Microsoft Office and intermediate Excel skills.
• Familiarize with IT tools.
• Confidence to communicate with people globally, at all levels of the firm.
• Ability to work to tight deadlines and manage firm´s cases.
• Outstanding attention to details and deadlines.
• Excellent communication skills.
• Willingness to learn new IP tendencies.
• Flexible, adaptable and efficient work practices.
• Spanish is preferred but not a must.