Intellectual Property Paralegal

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Intellectual Property Paralegal
The candidate provides patent prosecution support for Intellectual Property lawyers who primarily work on patent issues in the chemical, mechanical, and electrical arts, and in the biotechnology and pharmaceutical industries.  Must be able to work independently in an environment that is heavily computer-based, follow established client and team guidelines for matter management, maintain positive contact with clients, and observe confidentiality of client matters. Assist with preparation of patent application requisite documents including transmittal forms, assignments, information disclosure statements, declarations forms and all other related forms. Complete electronic filing of patent applications including provisional, non-provisional and design patents. Assist with the prosecution of patent applications including drafting of Office Action “shell” response and Preliminary Amendments and filing of responses with the United States Patent and Trademark Office.  Manage client documents for execution including the power of attorney forms and assignment forms. Review and manage docket deadlines. Complete related status checks. Manage timely payment of maintenance fees for patents. Correspond with foreign counsel regarding new patent filings and related prosecution deadlines. Prepare reporting letters to client and contact with clients as needed. Prepare and file Information Disclosure Statements. Prepare and file Patent Cooperation Treaty (PCT) applications. Manage and draft related documents in support of the patent application as needed including Correction to Defects and Recording Changes to the application.  Review Search Reports, Examination Reports and Written Opinions. Correspond with foreign counsel regarding new patent filings and related prosecution deadlines. Manage timely payment of maintenance fees and annuity payments for foreign patents and patent applications. Review and manage docket deadlines.  Complete related status checks. Prepare reporting letters to clients and communicate with clients as needed. Conduct database searches for patent, assignment, and security lien status. Assist transaction teams with searches. Respond to various client requests. Prepare and maintain patent status charts. Maintain close direct client relationships. Bachelor’s degree with a 3.5 cumulative GPA preferred. A paralegal certificate from an ABA-approved school is preferred. Should have 5-10 years of patent prosecution experience in a mid-to large-size law firm. Should be proficient in Excel, PowerPoint, Word, and Adobe. Strong, concise communication and writing skills are needed.

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