Foreign Filing Paralegal

New York, NY, Boston, MA or Los Angeles, CA

Summary

The world’s leading organizations and global players choose the firm to represent them when they need it the most. With 800+ lawyers in key financial centers around the world, they are known for our pragmatic and business-savvy approach.

The firm is the place to turn when a matter is complex, innovative, and game-changing. They work seamlessly across practices, industries and jurisdictions with asset managers, private equity and venture capital firms, Fortune 500 and FTSE companies, major sports leagues, entertainment industry legends and other industry- redefining companies. They are proud of their many achievements across a full spectrum of transactional and contentious practices.

The IP Foreign Filing Paralegal will provide support to clients, attorneys, paralegals and secretaries in all aspects of patent foreign filing, U.S. National Stage, and U.S. Bypass Continuation Application Filings. They must remain current on all U.S., PCT and foreign patent rules and rule changes in national offices. The Foreign Filing Paralegal will report directly to the Manager of IP Prosecution Services.

Responsibilities

• Prepare and submit patent filings in all foreign jurisdictions, including PCT, Paris Convention, and national phase filings.
• Use ePCT to prepare electronic international application packages for filing with the U.S. Receiving Office or, when appropriate, filing directly with the International Bureau.
• Prepare instructions to foreign associates outlining our clients’ instructions for both direct and national phase patent applications.
• Review and maintain docket of associated deadlines for assigned clients, including but not limited to management and tracking of all aspects of foreign formalities associated with filing.
• Coordinate with outside vendors to handle foreign formalities, e.g. translations, formal drawings, and apostille/legalization as necessary to comply with country law requirements.
• Prepare draft estimates for various stages of foreign prosecution from direct or PCT filing to Regional Validations stage. Knowledge of Global IP Estimator a plus.
• Manage large name change projects in multiple jurisdictions.
• Review large patent schedules and confirm information against foreign patent office databases.
• Serve as the primary contact for foreign associates from first filing to request for examination.
• Timely report incoming foreign mail and as-filed documents to clients.
• Coordinate the status of transferred applications and notify foreign associates of bulk changes to the assignee, docket numbers and attorney assignments.
• Prepare and file disclosure documents in relevant copending applications and understand the rules of disclosure in foreign jurisdictions.
• Keep current with changes in foreign country law.

Qualifications

• Bachelor’s Degree
• A minimum of 3 years of foreign filing experience in a fast-paced law firm environment
• Experience with life sciences-based patent prosecution strongly preferred
• Strong attention to detail and ability to manage multiple tasks simultaneously and meet deadlines with minimum supervision
• Sound judgment and ability to respect, protect and maintain highly confidential and sensitive information
• Ability to quickly and proactively identify problems and develop solutions
• Work independently and escalate concerns when needed
• Excellent interpersonal, organizational and communication skills, and ability to communicate effectively, both written and verbal
• Must work well in team environment and maintain a positive team atmosphere
• Strong technical skills in Microsoft Word, Excel, and patent docketing software; ePCT and Foundation IP experience a plus
• Experience working with PatDocs, Derwent, and TotalPatent One is a plus
• Willingness and flexibility to work overtime as needed 

This position will require physical presence in the firm’s offices on a regular basis (at least 3x per week, or more, if it becomes the policy of the Firm or as business needs require). The anticipated compensation range for this position is $90,000.00-$120,000.00, plus overtime and bonus. The actual salary offered will be based on a number of factors including but not limited to the qualifications of the applicant, years of relevant experience, level of education attained, certifications or other professional licenses held, and if applicable, the location in which the applicant lives and/or from which they will be performing the job.  

The firm is committed to providing a work environment that includes equal opportunity without regard to race, color, gender, age, creed, sex, religion, national origin, disability (physical or mental), marital status, citizenship, ancestry, sexual orientation, gender identity and gender expression, or any other legally protected status. 

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