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Organization TypeLaw Firm
Years of Experience
Date Last Verified
Foreign Patent Paralegal The candidate will be responsible for filing and maintaining International and foreign patent filing applications, overseeing disclosure of references, supporting annuity services, conducting patent searches and due diligence in support of litigation and commercial transactions. Will file International (PCT) applications and PCT follow on filings with appropriate offices. File various types of foreign patent applications with the assistance of foreign counsel. Review and understand patent docket entries, and actions needed in response to each deadline. Review incoming communications with attention to patent disclosure requirements in the U.S. and other jurisdictions. Coordinate disclosure of references where needed. Correspond with clients regarding upcoming annuity deadlines; collect annuity retainers and instruct payments through the firm's annuity payment service. Conduct patent searches. Extract and organize data retrieved from public and private databases. Respond to patent due diligence requests. Participate in patent filing strategy discussions and prepare accurate foreign filing estimates for budgeting purposes. Conduct factual research (for example: foreign requirements and allowances, chain of title, formality requirements) for patent filings using software tools and library resources. Provide litigation and transaction support as needed. Accurately and completely record billable time spent and tasks performed in accordance with firm policy and client-imposed billing protocol, enter and release time promptly in compliance with firm's announced deadlines. Accurately and promptly submit records of hours worked in compliance with firm policy and applicable employment law. Assist with U.S. patent filings. Prepare and file Information Disclosure Statements. Patent Proofreading. Verification of Patent Term Adjustment. Assist with preparation and filing of sequence listings. Prepare copyright applications; compile supporting information and documentation from clients.
Qualification and Experience
The candidate should have 4-year degree and completion of a paralegal program of study, or clear demonstration of equivalent knowledge and skill. Must have 3+ yearsâ€™ experience as an intellectual property/patent paralegal, with a significant focus on foreign prosecution. High level of familiarity with PATTSY (or equivalent Docketing software), Thomson Innovation, Thomson Connected IP Payments, Espacenet, ePCT, PATENTSCOPE, and USPTO's PAIR and EFS Web filing systems is essential. Knowledge of Paris Convention rules, PCT rules and procedures, and country law related to patents is essential. Advanced proficiency in Internet research skills and use of Microsoft Office is essential. computerized business applications (e.g., Word, Excel, and Outlook). Highly professional writing skill with ability to convey substantive content clearly and concisely is essential. Must have highly developed skill in time and task management, with ability to organize assignments, work calmly under pressure and meet deadlines.
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