Intellectual Property Patent Paralegal (Electrical Engineering)

Los Angeles, Seattle, San Francisco, or Phoenix

Summary

A leading national law firm is seeking an experienced Intellectual Property Patent Paralegal supporting our Electrical Engineering and Computer Sciences Practice Group. This role is hybrid and the preferred location is San Francisco. Will consider candidates who can work hybrid schedule in any office in either the Pacific or Arizona time zone (Los Angeles, Seattle, Phoenix).

Responsibilities

• Manage docket and patent prosecution practice for assigned global client portfolios
• Review, prepare and file patent prosecution application and supporting documentation with the U.S. Patent and Trademark Office and/or WIPO, as well as manage international patent filing requests and other documents for various countries
• Review, prepare and file multiple patent application types, including Provisional, Non-Provisional, Track 1, Design, PCT, US National Stage, Convention Filings, as well as coordinate international filing responsibility
• Prepare and file documents including, but not limited to Notice to File Missing Parts, Foreign Signature Documents, Formal Documents, responses to Office Actions, Issue Fee Transmittals, and Information Disclosure Statements, etc.
• Review incoming correspondence from the USPTO, WIPO, and/or international associates regarding status of patent applications, including Official Filing Receipts, Publications, Notifications, Assignments, Notice of Allowances/Acceptances, and Letters Patent documents. Ensure accuracy of contained information and when necessary, prepare and file necessary documents to correct errors.
• Review, prepare, monitor and update IDS charts and/or client portfolio spreadsheets as needed.
• Prepare, maintain and update reports for clients regarding status of applications and patents, as well update client dockets and sending reminders to attorneys, international counsel and clients as needed.
• Exceptional verbal and written skills with clients, internal and external counsel, USPTO personnel and vendors, as well as administrative and management skills to coordinate project management and handle substantive tasks for multiple, high-tech IP cases and/or portfolios
• Effectively set priorities, meet deadlines and manage multiple projects, including preparation and maintenance of internal docket reports, charts, meeting agendas
• Responsible for case and file management, including uploading communications and documents to docketing and DMS systems, as well as, maintaining and updating files and client portals and attending any status meetings
• Perform research and compile data as requested

Requirements

• Knowledge of USPTO, PCT, and international patent rules and procedures
• Proficient in filing with U.S. Patent and Trademark Office and ePCT
• Proficient in understanding IP docket and deadlines and maintaining Secondary Docket
• Strong attention to detail, communication and interpersonal skills
• Strong organizational skills and ability to prioritize multiple projects
• Proficient in Microsoft programs (Word, Excel, PowerPoint, Outlook, Adobe)
• 7+ years IP experience, supporting high-volume Hard Science portfolios.
• Docketing knowledge and experience, with CPi software preferred
• Paralegal Certificate

Compensation: $110,000.00-$150,000.00, annually plus overtime.

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