Patent Paralegal

Philadelphia, PA; Washington, DC

Summary

Our client seeks a Patent Paralegal to join the Intellectual Property team in its Philadelphia or Washington, DC office. Responsible for providing  paralegal/administrative support to the Intellectual Property Group under the direct supervision of the Manager of IP Prosecution.

Responsibilities

• Assist in all aspects of U.S., PCT and foreign patent prosecution to include preparation of patent applications, formality documents (assignments, PoA, declarations), IDS and various U.S. and foreign responses;
• Prepare client correspondence to include but not limited to reporting filings, U.S. and foreign office actions and status of applications and patents;
• Review and maintain a daily docket for deadlines; understand docket, deadlines and action needed on each file;
• Inform responsible attorneys of deadlines; interpret and understand the rules of the USPTO, PCT and other international patent offices, relating to IP prosecution; and
• Assist with IP due diligence projects, as needed.

Qualifications

• Familiarity with US and international patent law.
• Interpersonal skills necessary to communicate and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with professionalism and tact.
• Ability to work under pressure while producing a high volume of information with attention to detail while producing an accurate document.
• Willingness and ability to accept changing assignments and priorities.
• Ability to compose, proofread and edit (e.g., punctuation, grammar, spelling) routine memoranda and correspondence.
• Ability to identify and analyze complex issues and problems and to recommend and implement solutions.
• Strong PC knowledge in order to utilize various online electronic filings with government agencies and to maintain worksheets for clients.
• Proficient in Microsoft Office Products (Excel, Outlook, PowerPoint, Word); strong organizational and administrative skills.
• Effective communication skills, both verbal and written.
• Maintain accurate information in the firm’s various software applications associated with IP.
• Proficient with using and/or understanding docketing software.
• Ability to provide quality client service to both internal and external clients effectively and professionally.
• Minimum five years’ paralegal/administrative IP Patent Prosecution experience at a mid-size law firm.
• Proficient with using and/or understanding docketing software.
• Experience in on-line IP database searching.
• E-filing experience
• Experience with foundation IP a plus

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