Intellectual Property (IP) Paralegal

Position Summary

The Intellectual Property (IP) Paralegal position will provide organizational and practice specific assistance to attorneys in the IP Department by managing patent prosecution and trademark matters, including related research, analysis, docketing, and e-filing. Also supports the department with general administrative duties and special projects related to IP matters.

Key Responsibilities

• Manages and organizes U.S.& foreign patent and trademark docket and processes for multiple IP attorneys
• Prepares and files Provisional, U.S. Utility, Continuation, Divisional, Design, PCT & 371 US national stage applications, & reissue applications with the U.S. Patent and Trademark Office (USPTO)
• Filings follow-on patent and trademark prosecution submission requirements such as response to office actions and issue fee payments with the (USPTO)
• Prepares and files PCT applications with the IB and USPTO
• Effects national phase entry of PCT applications
• Performs assignment searches, assignment recordings, and handles chain of title projects
• Docket management and calendaring requiring significant awareness of and sensitivity to time management and filing deadlines
• Manages and updates files with USPTO patent center database and prepares responses as needed
• Reviews, files, and prepares Information Disclosure Statements and accompanying documents
• Drafts shells for Office Action Responses
• Provides client management support by maintaining client portals, updating client status charts, running various client docket reports for portfolio analysis, and communication with clients regarding upcoming U.S. patent deadlines, requests for instructions, formalities reminders, and filings
• Calculates Patent Term Adjustments and processes payment of Issue Fees
• Corresponds with foreign associates, oversees payment of foreign associates' invoices, and prepares reporting letters to client
• Effects portfolio transfers and manages multi-client portfolios
• Files and assists in prosecution of design applications (including convention deadlines for filing abroad)
• Proofs and edits patent and trademark applications, formal documents, and office actions, and prepares office actions’ shell responses
• Maintains composure, positive outlook, and professionalism
• Recognize confidential, sensitive, and proprietary information and maintain confidentiality
• Works independently and as part of a cross-functional, collaborative team
• Communicate clearly and professionally, including active listening and ability to convey information clearly
• Deal calmly and effectively with high stress situations, including unfavorable situations and /or when constructive criticism is given

Qualifications

• Skills & Competencies: High attention to detail, outstanding organizational skills, and the ability to manage time effectively; Ability to work under pressure to meet strict deadlines, adapt to a fast-paced, high-pressure environment to achieve business goals and objectives; High attention to detail, outstanding organizational skills, and the ability to manage time effectively; Ability to maintain composure, positive outlook, and professionalism; Recognize confidential, sensitive, and proprietary information and maintain confidentiality; Highly motivated, self-starter who can work well under minimal supervision, as well as take a proactive approach in being team-oriented; Excellent interpersonal and communication skills (oral and written), and professional demeanor and presentation, including active listening and ability to convey information clearly; Ability to deal calmly and effectively with high stress situations, including unfavorable situations and /or when constructive criticism is given.
• Education & Prior Experience: Bachelor’s Degree required, Certificate in Paralegal studies from an accredited institution preferred; equivalent experience considered; Certified Paralegal a plus; Minimum five years of relevant work experience in a professional environment. Law firm experience preferred; Extensive knowledge of U.S. patent rules and procedure; knowledge of PCT and/or national laws of other countries; Previous experience with Anaqua is a plus; Copyright application filing experience a plus; Technology Proficiency in Windows-based software and Microsoft Office Suite, including Word, PowerPoint, Excel, and Outlook; Exceptional computer skills with the ability to learn new software applications quickly; Previous experience with iManage is a plus; Demonstrates a basic understanding of artificial intelligence (AI), including core capabilities, limitations, and importance of data privacy, accuracy, verification, and ethical considerations within a professional services environment; Familiarity with or willingness to learn AI platforms (e.g., Microsoft Copilot, ChatGPT, or similar tools) and incorporate them responsibly into day-to-day workflows to enhance daily work tasks as appropriate and/or directed; Proactive approach to learning and adapting to emerging AI and related technologies and contributes to a culture of innovation.

Benefits

• The Expected Pay Range For This Position Is $45.31 - $52.61 per hour Actual pay will be adjusted based on experience, location, and other job-related factors permitted by law.
• Full time employees may be eligible for a discretionary bonus, health insurance with an optional HSA, short term disability, long term disability, dental insurance, vision care, life insurance, Healthcare and Dependent Care Flexible Spending Accounts, 401K, vacation, sick time, and an employee assistance program.
• Additional voluntary programs include: voluntary accident insurance, voluntary life, voluntary disability, voluntary critical illness and cancer insurance and pet insurance.
• Commute and Transit programs may also be available in certain markets.

About the Role

We offer competitive compensation and an excellent benefits package, along with the opportunity to work within an innovative and collaborative environment.

Requirements

• Must have a Bachelor’s Degree
• Must have a minimum of five years of relevant work experience in a professional environment
• Must have extensive knowledge of U.S. patent rules and procedure
• Must have previous experience with Anaqua
• Must have copyright application filing experience
• Must have technology proficiency in Windows-based software and Microsoft Office Suite
• Must have a basic understanding of artificial intelligence (AI)

Skills

• High attention to detail
• Outstanding organizational skills
• Ability to work under pressure
• Adaptability and innovation
• Excellent communication skills
• Confidence and resilience
• Professional demeanor and presentation
• Active listening and clear communication
• Dealing with high stress situations

Benefits

• Competitive compensation
• Adequate benefits package
• Opportunity to work in an innovative and collaborative environment