Patent Prosecution Paralegal
Pillsbury Winthrop Shaw Pittman LLP · San Diego, CA · 1 wk ago
Legal$105k–$145k/yrFull-time
Primary Responsibilities
- Prepare and file U.S. patent applications, including utility, continuation, divisional, reissue, and related applications with the United States Patent and Trademark Office (USPTO).
- Prepare and file international (PCT) patent applications, direct foreign applications, and related follow-on documents.
- Prepare and file prosecution documents with the USPTO, PCT authorities, and foreign patent offices.
- Review, process, and report patent office communications, including filing receipts, publication notices, notices of recordation, issue notifications, notices of allowance, patent grants, and other official correspondence.
- Prepare and file patent-related formalities documents, including declarations, substitute statements, assignments, information disclosure statements (IDS), issue fee payments, and responses to formalities requirements.
- Prepare and file PCT-related documents, including Article 19 amendments, Chapter II demands, Article 34 amendments, and responses to invitations and notifications.
- Monitor and maintain client-specific dockets and ensure timely completion of all filing and prosecution deadlines.
- Maintain working knowledge of USPTO, PCT, and foreign jurisdiction requirements, including formal documents, priority documents, legalization requirements, translations, and deadline calculations.
- Communicate directly with clients and foreign associates regarding filings, formal documents, deadlines, and prosecution matters.
- Keep attorneys and patent professionals informed regarding the status of patent applications and prosecution activities.
- Research patent-related and client-specific inquiries.
- Compile information, perform research, and prepare reports as requested by attorneys and patent agents.
- Retrieve, organize, and manage patent-related documentation and correspondence.
- Perform other duties and special projects as assigned.
Qualifications
- Minimum of 3+ years of patent prosecution experience in a law firm or comparable professional services environment.
- Experience supporting U.S., PCT, and/or foreign patent prosecution matters.
- College degree or equivalent paralegal experience required; paralegal certificate preferred.
- Thorough knowledge of USPTO rules, procedures, and electronic filing systems.
- Working knowledge of PCT procedures and foreign patent prosecution practices preferred.
- Ability to meet the Firm's billable hour requirements while maintaining exceptional client service and high-quality work product.
- Excellent organizational, data management, and attention-to-detail skills.
- Strong analytical, problem-solving, and project management abilities.
- Ability to plan, organize, prioritize, and coordinate multiple projects and deadlines simultaneously.
- Sound judgment, initiative, and resourcefulness in accomplishing objectives.
Pay
The expected salary range for this position is $105k-145k. Final compensation will be determined based on several factors, including but not limited to, relevant experience, qualifications, skill set, and geographic location.