IDS Patent Paralegal

About the role

The Patent Paralegal assists attorneys in different practice groups with meeting the duty of disclosure in U.S. and foreign jurisdictions for patent portfolios. This position closely manages the deadlines associated with the duty of disclosure across foreign and U.S. jurisdictions for assigned clients and works collaboratively and effectively with attorneys, clients, and other staff to collect necessary materials and prepare and timely file Information Disclosure Statements and foreign disclosures.

Responsibilities

• Prepares and files Information Disclosure Statements with the United States Patent and Trademark Office (USPTO).
• Prepares disclosures of information for submission with foreign patent offices and coordinate with foreign associates regarding same.
• Reviews Office Actions from U.S. and foreign patent offices for cited references.
• Reviews patent files for prior art before payment of issue fee and upon intake into the firm.
• Effectively organizes references in connection with patent portfolios into prior art databases and routinely maintain these databases.
• Compiles, populates, and maintains electronic archive of prior art.
• Corresponds with clients and works with Firm’s library department to collect materials needed in connection with duty of disclosure.
• Manages attorney and client dockets relating to the duty of disclosure in U.S. and foreign jurisdictions and meet regularly with attorneys regarding same.
• Develops and maintains knowledge of patent office rules and procedures in connection with U.S. and foreign duty of disclosure and other areas of patent prosecution.
• Aids with development and documentation of processes and procedures.
• Aids with training of paralegals as needed by serving as a resource on procedures, patent office rules, and providing some work product review and/or quality control checks.
• Aids with additional patent prosecution related projects on an as-needed basis.
• Maintains the department’s 1200 billable hour expectation and adhere to best practice for daily time entry.
• Works with team to collaborate on large projects; actively promotes a positive work environment.

Qualifications

• Bachelor’s degree preferred.
• Minimum of three to six (3-6) years of patent prosecution experience in a law firm or professional setting.
• Highly proficient in MS Outlook, Word, and Excel as well as computer and database management skills.
• Experience with CPi, IPDAS, and general time entry.
• Exceptional oral and written communication skills and the ability to effectively communicate workflow and project updates.
• Strong time management, prioritization, problem-solving, and organizational skills, and the ability to work effectively in a high-pressure environment.
• Cumbersome organizational skills with meticulous attention to accuracy and detail.
• Possess comprehensive knowledge of legal terminology, rules, regulations, and procedures specific to assigned practice area.
• Strong interpersonal skills and ability to work effectively with different levels of constituencies.
• Flexibility and capacity to respond calmly, efficiently, and effectively in stressful situations.
• Able to adhere to established work schedule, but with flexibility required to respond to workload demands including overtime requests when needed.
• Punctual and reliable and able to meet set deadlines and work effectively under pressure.
• Able to maintain confidentiality of matters and other firm business information.