Patent Prosecution Paralegal Job Description

'A patent prosecution paralegal is someone who works on patent prosecution matters under the supervision of licensed patent attorneys in a law-related setting. Patent prosecution paralegals do not practice law, as they are not licensed attorneys, but they help in many aspects of patent prosecution matters. Patent prosecution involves applying for patent protection on scientific inventions like computer programs and medicines with the United States Patent and Trademark Office. Because patent prosecution involves understanding complicated technical scientific issues, it is often helpful for patent paralegals to have some additional knowledge (like an undergraduate degree) in a hard or life science such as engineering or chemistry. Patent prosecution paralegals are also sometimes referred to as patent prosecution legal assistants.


Here are a few sample patent prosecution paralegal job descriptions:

Patent Prosecution Paralegal

Seeking a Patent Prosecution Paralegal to be responsible for patent prosecution paralegal duties. Must have College degree or 5+ years of patent prosecution experience. Bachelor's degree is preferred. 5+ years' work experience in domestic and basic foreign intellectual property experience is preferred. Must have knowledge of USPTO rules and procedures. Should have a basic understanding of foreign patent prosecution procedures. Knowledge of filing requirements for convention (non-PCT) applications is needed. Working knowledge of Microsoft Office Suite, including MS Word, Outlook, Excel, PowerPoint is needed.

Patent Prosecution Paralegal

Seeking a Patent Prosecution Paralegal to assist with design patent matters. Duties also include interacting with attorneys in domestic prosecution department. File creation and maintenance through life of a design patent application, from filing to patent issuance, including regular status checks in USPTO private status system. Preparing correspondence. Heavy database entry and maintenance. Maintenance of prior art books for major clients. Time entry and billing. Online and general research. Heavy contact with clients and foreign associates, as well as drafting services for preparation of design drawings. 1+ years of experience is needed. BA/BS degree is required. Proven experience with preparation and on-line filing of design patent applications, responses to office sections and assignments is needed.

Patent Prosecution Paralegal

The candidate will support client billing activities. Will serve in administrative duties also include assistance with travel arrangements, calendaring and scheduling. Should have 3+ years of Patent Prosecution experience. Must be experienced with patent prosecution, foreign prosecution, electronic and manual filing procedures and in searching the PAIR databases in the US Patent and Trademark Office (USPTO). Should have experience of preparing formal papers for patent applications, filing new patent applications, and amendments and other documents in the USPTO. Experience also preparing Information Disclosure Statements and PCT applications essential. Proficiency in MS Word, Outlook, Excel, and PowerPoint necessary.

Patent Prosecution Paralegal

The candidate's responsibilities include assisting attorneys with both U.S. and foreign patent prosecution matters, including the following: Draft PCT and design application transmittal papers; Draft and coordinate execution of Assignments, Powers of Attorney, and Declarations; Draft Responses, Preliminary Amendments, Missing Parts Response, Petitions, Request for Extensions of Time, Information Disclosure Statements, Notice of Appeal, Issue fee, Requests for corrected documents and perform status checks; Filing title documents; Draft documents and responses related to applications, Request, Demand for Preliminary Examination; Draft and file National and Regional applications; correspond with foreign associates; Legalize foreign documents; Coordinate execution of foreign Powers of Attorney and Assignments; Draft Reporting letters and fee reminders; Knowledge of docketing system, however no docketing is required. Should have bachelor's Degree together with 3+ years of experience. Solid computer skills needed. Strong Excel skills (to print reports).

Patent Prosecution Paralegal

The candidate will be responsible for assisting the attorneys with all phases of patent prosecution matters. Will be assisting attorneys with patent prosecution matters. Draft PCT application transmittal papers. Draft and coordinate execution of Assignments, Powers of Attorney, and Declarations. Draft Responses, Preliminary Amendments, Missing Parts Response, Petitions, Request for Extensions of Time, Information Disclosure Statements, Notice of Appeal, Issue fee, Requests for corrected documents and perform status checks. Filing title documents, draft documents and responses related to applications, Request, Demand for Preliminary Examination. Draft Reporting letters and fee reminders and more. Should have Bachelor's Degree together with 2+ years of experience. Solid computer skills are needed.

Patent Prosecution Paralegal

The candidate will be responsible to assist attorneys with both U.S. and foreign patent prosecution matters. Draft provisional, non-provisional, PCT and design application transmittal papers. Draft and coordinate execution of Assignments, Powers of Attorney, and Declarations. Draft Response shells, Preliminary Amendments, Missing Parts Response, Petitions, Request for Extensions of Time, Information Disclosure Statements, Notice of Appeal, Issue fee, Requests for corrected documents and perform status checks. Filing of chain of title documents. Draft documents and responses related to PCT Applications, Request, Demand for Preliminary Examination, Request under 92bis, Response to Defects and Appointments of Agents. Draft and file National and Regional Phase applications in PCT countries and correspond with foreign associates. Legalize foreign documents; Coordinate execution of foreign Powers of Attorney and Assignments. Draft Reporting letters and fee reminders. Maintain docket - Knowledge of CPI or similar docketing system. Must have Bachelor's Degree.

Patent Prosecution Paralegal

The candidate will be drafting and filing patent documents with the USPTO. Docketing filings, maintaining several attorney dockets for the US and abroad. Handling patent formalities (e.g., filing information disclosure statements). Corresponding with clients and foreign associates. Preparing sequence listings. Performing other administrative tasks as needed.

The candidate should have Bachelor's degree. Must have 2-5 years of patent prosecution experience. Experience corresponding with clients, managing a docket, and completing United States Patent and Trademark Office (USPTO) forms needed. 

Patent Prosecution Paralegal

The candidate will be managing Docket U.S. Mail incoming and docket completion of responses filed. Will prepare all forms for electronic filing with the USPTO; Electronically File documents with the USPTO; Report filings to clients. Filing provisional, design, divisional, continuation/in/part applications, and national phase U.S. applications; proofreading of patent applications, if needed: reporting same to clients. Tracking and preparing Declaration, Power of Attorney, and 3.73(b)/Assignment for U.S. applications with reminders if necessary; tracking and preparing all responses to Notices for missing parts or Corrected Application Papers, with reminders if necessary; recordation of assignments; requesting updated filing receipts when needed. Preparation of preliminary amendments, substitute specifications, forms for responses amendments to Restriction Requirements, Office Actions, and other miscellaneous communications (including Petitions) with the USPTO; reporting same to clients. Preparation, filing, and reporting of information Disclosure Statements. Review and client reporting of the Notice of Publication, Issue Notification, Letters Patent: prepare Certificates of Correction. Tracking, preparing, filing, and reporting all responses to Notice of Allowance/issue fees, with reminders if necessary. Client Status reports-both U.S. and foreign- as requested. Maintain PTO Customer Nos.; maintain attorney individual PKI certificates as needed. Must have Bachelor's degree or relevant work experience. Should have 4+ years of work experience in a law firm environment, or related professional experience. Familiarity with procedures for billable time in time tracking program such as CD Entry, CPI docketing program, and Filesite a plus. Also, familiarity with Microsoft Word and Excel and electronic filing with the USPTO is required. Thorough knowledge of patent docketing procedures is needed. Thorough knowledge of U.S. patent prosecution procedures and PTO rules and forms is essential.'