Patent Paralegal III

About the company

Finnegan is more than just a law firm – we are a powerhouse of innovation and strategy growth. We pride ourselves on providing top-tier intellectual property services globally. Our success is rooted in our emphasis on relationships with our clients and each other. We care about every individual, and it is why many professionals have spent their entire careers at Finnegan.

About the role

The Patent Paralegal III will demonstrate comprehensive knowledge and understanding of U.S. and international patent law and firm procedures to prepare filings, manage deadlines and draft related correspondence. This position will also be responsible for monitoring filing deadlines, time entry, editing client bills and processing invoices in accordance to client standards and firm procedures.

Responsibilities

• Coordinates U.S. and international patent application filings procedures with client teams.
• Reviews the docket to ensure that all deadlines are met appropriately, seeks instructions from client (as appropriate).
• Provides attorneys with information and/or materials to enable them to meet their responsibilities.
• Determines, distributes, and ensures compliance with client-specific procedures.
• Reviews for accuracy USPTO (U.S. Patent and Trademark Office) and foreign patent office papers in a timely manner (e.g., office actions) [This may be client specific; meaning, working attorney and secretary may file responses to office actions and report the same to client].
• Prepares formalities associated with USPTO (and/or international patent offices) filings, including application papers, responses to Missing Parts, Information Disclosure Statements, Oaths/Declarations, correction of filing receipts, publication requests, assignment recordation, issue fee payment, certificate of correction; prepares and files new U.S. and national stage applications.
• Drafts correspondence to client, foreign counsel, and others.
• Responds to client and attorney/staff inquiries in a timely manner.
• Coordinates the integration of transferred-in cases into firm system, including communicating with Records and Docket Departments.
• Communicates with client, professional and support staff in a professional manner.
• Maintains complete files in good order.
• Remains current in knowledge of USPTO rules and regulations and/or international practice.
• Opens new matters/new utility/new continuation/div