The IP Paralegal is responsible for providing technical and administrative support to attorneys, patent agents, technical specialists and clients in all aspects of patent prosecution.
This position reports to the Partners.
A hybrid work schedule is available for this position and candidates must be within a commutable distance.
There is no billing requirement for IP Paralegal.
Ideal candidate will have prior applicable patent prosecution experience.
Other qualifications for PL include, but not limited to:
=> Four year degree and PL training/certificate.
Applicable experience may be substituted for formal education if 2 year degree and paralegal certificate.
=> Relevant PATENT prosecution experience in a professional environment which includes progressive responsibility in managing patent matters on the prosecution side.
=> Knowledge of USPTO’s Electronic Filing System and patent rules and regulation, and USPTO-PAIR.
Prior experience in executing electronic filings with the US Patent and Trademark office.
Knowledge of US and PCT patent rules and procedures to prepare and file USPTO applications (i.
e.
provisional, non-provisional and continuing applications).
=> Knowledge to prepare and file other relevant USPTO documents (i.
e.
assignments, declarations and powers of attorney), Information Disclosure Statements, preliminary amendments, responses, requests for continued examination, and missing parts.
=> Prior experience issuing fee payments in accordance with applicable fee schedules.
=> Prior experience assisting with billing (Timeslips highly desirable).
And proficiency with Windows-based software applications (including Microsoft Office Suite and Adobe DC)
=> Ability to prepare related client correspondence in accordance with firm/client guidelines to report accurately and timely, and to respond to client inquiries and requests, and provide status reports as directed.
Draft correspondence to clients regarding status of applications and patents, and reporting Office Actions.
Correspond with foreign associates; oversee payment of foreign associates’ invoices.
=> Ability to assist in preparing claim amendments, to construct timelines of events, to review file history, to extract critical data and reconstruct portfolio.
=> Patent prosecution experience preferably within a law firm environment.
Occasional overtime work may be necessary.
Other duties as assigned may include planning, directing and reviewing of the work assigned to other support staff, as well as special projects designated by associates/partners.
=> Possess strong attention to detail with the ability to navigate multiple tasks and deadlines and ability to maintain knowledge of the status of ongoing client matters.
Please send resume and salary requirements in confidence to office@sbpatlaw.
com (no phone calls please)
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