Patent Paralegal III

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.

Responsibilities

• Coordinates U.S. and international patent application filings procedures with client teams.
• Reviews the docket to ensure all deadlines are met, seeks instructions from clients as appropriate.
• Provides attorneys with information and materials to enable them to meet their responsibilities.
• Determines, distributes, and ensures compliance with client-specific procedures.
• Reviews for accuracy USPTO and foreign patent office papers (e.g., office actions).
• Prepares formalities associated with USPTO and international patent office filings, including application papers, responses to Missing Parts, Information Disclosure Statements, Oaths/Declarations, correction of filing receipts, publication requests, assignment recordation, issue fee payment, and certificate of correction.
• Prepares and files new U.S. and national stage applications.
• Drafts correspondence to clients, foreign counsel, and others.
• Responds to client and attorney/staff inquiries in a timely manner.
• Coordinates the integration of transferred-in cases into the firm system.
• Maintains complete files in good order.
• Opens new matters/new utility/new continuation/divisional/CIP matters.
• Processes invoices.
• Downloads and saves art cited by patent office examiners.
• Forwards substantive matters to working/review attorneys (e.g., Office Actions).
• Prepares and instructs foreign counsel for national stage applications.
• Calls examiners or respective patent offices for clarifications or corrections.
• Prepares and files PCT applications.
• Prepares monthly client reports.
• Maintains complete and accurate database tracking information.
• Reviews draft client bills for accuracy and suggests edits.
• Performs factual research on clients, competitors, and other topics.
• Attends patent prosecution and technological trainings.
• Completes core training, skills assessments, and related development.
• May provide guidance to Patent Paralegals and other staff.
• Assumes progressive responsibilities as experience grows.

Qualifications

• Bachelor’s degree and minimum of 8 years of patent prosecution experience in a professional services environment; OR, in lieu of a degree, a minimum of 9 years of patent prosecution experience in a law firm environment.
• Comprehensive knowledge of international patent law rules, procedures, and requirements.
• Ability to navigate USPTO and international patent office websites and search tools.
• Experience with electronic filing procedures for USPTO and international patent offices.
• Ability to prepare and file new U.S., national stage, and PCT applications.
• Proficiency in Microsoft Office Suite and meeting platforms (Teams, Zoom).
• Experience with case/matter management and database tools.
• Expert research skills using various tools, including the Internet and government websites.
• Strong customer service, writing, and verbal communication skills.
• Ability to work independently and take direction.
• Ability to work under pressure, meet deadlines, and prioritize tasks.
• Courteous and efficient interaction with attorneys, clients, staff, and vendors.
• Willingness to work overtime and be a team player.

Pay

The base annual pay range for this role is between $85,000 - $100,000. The base pay offered will vary based on skills,