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Organization TypeLaw Firm
Years of Experience
Date Last Verified
ProfilePatent Paralegal The candidate will assist attorneys across various practice groups with meeting the duty of disclosure in U.S. and foreign jurisdictions for patent portfolios. Closely manage the deadlines associated with the duty of disclosure across foreign and U.S. jurisdictions for assigned clients and works collaboratively and effectively with attorneys, clients and other staff to collect necessary materials and prepare and timely file Information Disclosure Statements. Coordinate with the department supervisor to aid with development and documentation of processes and procedures and assist with training of junior paralegals as needed. Works with attorneys, team members and other staff on additional patent prosecution work such as due diligence and other special projects. Works independently and also contributes to a team culture that places a strong emphasis on supporting one another, sharing new ideas and raising concerns. Prepare and file Information Disclosure Statements with the United States Patent and Trademark Office (USPTO). Prepare disclosures of information for submission with foreign patent offices and coordinate with foreign associates regarding same. Review Office Actions from U.S. and foreign patent offices for cited references. Review patent files for prior art before payment of issue fee and upon intake into the firm. Effectively organize references in connection with patent portfolios into prior art databases and routinely maintain these databases. Compile, populate and maintain electronic archive of prior art. Correspond with clients and work with Firm’s library department to collect materials needed in connection with duty of disclosure. Manage attorney and client dockets relating to the duty of disclosure in U.S. and foreign jurisdictions and meet regularly with attorneys regarding same. Develop and maintain knowledge of patent office rules and procedures in connection with U.S. and foreign duty of disclosure and other areas of patent prosecution. Coordinate with department supervisor to aid with development and documentation of processes and procedures. Assist with training of junior paralegals by serving as a resource on procedures, patent office rules, and assisting with work-product review as needed. Assist with additional patent prosecution related projects. Meet the department’s expectation for billable hours and adhere to best practice for daily time entry. Work with team to collaborate on large projects.
Qualification and Experience
The candidate should have BS/BA Degree or equivalent experience. Must have 3-5 years of experience working in patent prosecution. Possess exceptional organizational skills and attention to detail. Able to communicate in a professional, tactful and confident manner. Strong critical thinker with demonstrated ability to work independently and to proactively and effectively solve problems. Proficiency in all Microsoft Office applications, especially Excel, Word and Outlook required. Knowledge of CPI and/or IPDAS is also desirable.