IP Patent Paralegal Job Description

'An intellectual property patent paralegal is a paralegal who works in the area of patent law. Depending on the type of attorney or law firm the paralegal works for, he or she might assist with lawsuits involving existing patents and patent infringement (patent litigation) or with drafting patent applications to secure patents for scientific inventions with the United States Patent and Trademark Office (patent prosecution). Because intellectual property patent paralegals are not attorneys and have not been admitted to the bars of any state, they must always work under the direction of a practicing attorney.

Here are a few sample ip patent paralegal job descriptions:


IP Patent Paralegal

The candidate will be responsible for: Preparing and proofing patent forms and documents; Electronic filing with the U.S. Patent and Trademark Office; U.S. client relations; Time entry; Docket management; and Calendaring. Bachelor's degree or paralegal certificate preferred. Must have 2-5 years of Intellectual Property experience.

IP Patent Paralegal

The candidate will work under the direction of the IP Practice Manager. Will assist the IP Practice Section to function in a consistent productive manner; is responsive and ensures that all documents received from clients, foreign agents, U. S. Patent and Trademark Office and other government agencies have been responded to timely, accurately, and all other day to day responsibilities are being met under established policies and procedures; while exercising discretion and confidentiality in maintaining contact with clients, attorneys and staff. Ensures that policies and procedures are being followed on a day to day basis in relation to assigned duties, including client special instructions and in accordance with established firm guidelines. Monitor and follow-up on dates associated with the US and foreign docket, including clearing dates and providing follow-up with attorneys, clients and management in order to provide adequate time to respond. Clears daily docket reports in accordance with established firm guidelines and notify the docket department of any inaccuracies. Responsible for working with attorneys in keeping abreast of all rules and regulations and procedures for filing US and 371 applications including all formalities related thereto. Responsible for creating and forwarding formal documents to the client within a certain schedule to reduce a back-log of work. Prepare all transmittal cover sheets, assignments, declarations, information disclosure statement, etc. for final review and approval by supervisory patent attorney and/or patent agent. Receive and act upon client instructions, including confirmation and/or draft response to client inquiries related to US, PCT and foreign applications. Reviews attorneys' client information and ensures that addresses, special instructions are being followed in accordance with the clients' standard operating procedures. Create and maintain electronic worksheets to assist attorney in managing client needs. Provide support for Patent Trial and Appeal Board proceedings and appeals. Recordation of assignments and name changes in the U.S. and internationally. Draft routine correspondence and/or formal documents for filing at the U.S. Patent and Trademark Office "USPTO" for attorneys and others as needed, proofread, photocopy, scan documents into the firm's document management system and assemble correspondence as needed. Track and record client-billable time as required meeting minimum billable hour requirements. Draft responses, Information Disclosure Statements and other related prosecution documents relating to filing with the USPTO. Responsible for completion of the Notice of Allowance checklist and payment of Issue Fee. Responsible for maintaining and prioritizing work on a daily basis and communicate if unable to meet daily responsibilities. Utilize USPTO and other related government agency electronic resources effectively. Willingness and flexibility to work closely with all departments and others as needed. Provides back-up support to other team members as needed, including Patent Service Assistants and/or other IP Patent Paralegals if requested. And performs other duties as assigned. Must have 5-7 years of combined comprehensive domestic and foreign patent prosecution experience, including docket management, application filings and prosecution in order to gain an understanding to provide support and planning that will ensure a high quality and accurate work product. College Degree is helpful or equivalent specialized training, i.e., paralegal studies from an ABA recognized program.

IP Patent Paralegal

The candidate will be responsible for: preparing and proofing patent forms and documents; electronic filing with the USPTO; US client relations; time entry; docket management; and calendaring. Bachelor's degree or paralegal certificate preferred. Must have 5-10 years of intellectual property experience. Should have strong computer skills especially in MS Word and Outlook.

IP Patent Paralegal

The candidate will be responsible for electronic filings of USPTO documents, international (PCT) applications, PCT amendments and Demands for International Preliminary Examination through PCT-Safe and ePCT. Will also be responsible for overseeing domestic and foreign patent prosecution matters from filing to grant including payment of annuities or interfacing with clients regarding payment of annuities, and preparing status and docket reports for clients. Must have 5+ years of patent filing and prosecution work experience, including familiarity with registration practice, IPR knowledge, and in-depth knowledge of patent filing and prosecution practices in the USPTO, PCT, and other major jurisdictions worldwide. Should have working knowledge of patent docketing software. Associate's degree and paralegal certificate from an accredited paralegal program required.

IP Patent Paralegal / Legal Assistant - Patent Prosecution

The candidate will handle preparation and filing of new U.S. patent applications, continuation/divisional applications, responses to office actions, information disclosure statements and more. Should preferably have 5+ years of progressive Intellectual Property experience, thorough knowledge of USPTO rules of practice and experience with Patent Trial and Appeal Board post grant proceedings with the ability to file documents when necessary with other Federal Agencies and Courts.

IP Patent Paralegal

The candidate will assist on Electronic filings of USPTO documents. Will assist on International (PCT) applications. PCT amendments and Demands for International Preliminary Examination through PCT-Safe and ePCT. Responsible for overseeing domestic and foreign patent prosecution matters from filing to grant including payment of annuities or interfacing with clients regarding payment of annuities, and preparing status and docket reports for clients.

The candidate must have 5+ years of patent filing and prosecution experience. Must be familiar with registration practice, IPR knowledge, and in-depth knowledge of patent filing and prosecution practices in the USPTO, PCT, and other major jurisdictions world-wide. Working knowledge of patent docketing software is required. Associate's degree and/or Paralegal Certificate from an ABA accredited paralegal school are required.

IP Patent Paralegal

Responsibilities: Will prepare and file patent application formalities on a client's behalf. Deal with the different formalities and procedures of the various Patent Offices throughout the world. Handle certain objections raised by those Offices. Contact applicants/clients to obtain information as needed to prepare patent applications. Prepare all transmittal cover sheets, assignments, declarations, information disclosure statement, etc., for final review and approval by supervisory patent attorney. Assemble literature references for information disclosure statements that are submitted to the PTO. Maintain contact with applications/clients to keep them apprised of the status of the patent application and to obtain any materials/information that are relevant to the prosecution of the patent application. Write many necessary documents arising during patent prosecution (i.e., preliminary amendments, amendments/shells, some petitions, certificates of correction, etc.), which are reviewed by supervisory patent attorney prior to submission to PTO. Manage New York docket of active patent cases to ensure all are handled in a timely fashion. Coordinate intake and opening of new patent prosecution matters. Track and record client-billable time as required to meet minimum billable requirements. Prepare, maintain, coordinate and manage annuities for foreign patent applications. Perform special projects, as assigned. Review and reporting of correspondence received from (U.S. and foreign) patent office(s). Represent clients in an international practice and participate immediately in sophisticated intellectual property matters.
Qualification Requirements: The candidate must have 5+ years of experience and be graduated from a four-year college or university with a Bachelor's degree, and certificate of completion from a paralegal training program, American Bar Association (ABA) approval is preferred. Under exceptional circumstances the firm may substitute significant, relevant work experience for educational requirement. Must have excellent organizational and writing skills. '