Job Details

Patent Prosecution Paralegal Intellectual Property

Company name

Organization Type

Law Firm

Job Type

Legal Staff

Date Last Verified

Oct 09,2018

Posted on

Aug 01,2018


New York City, NY
Practice Area
Intellectual Property >> Intellectual Property - General
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Patent Prosecution Paralegal – Intellectual Property Duties: Under general supervision and according to established policies and procedures, performs a variety of duties to assist attorneys to whom assigned. Maintains positive contact with clients and observes confidentiality of client matters. Organizes reviews and drafts documents; conducts searches and filings; and keeps accurate time records. Expected to record a minimum of 1650 billable hours/year. Edit and format specifications. Draft simple Visio drawings. Draft provisional, non-provisional and design application transmittal papers. Draft assignments including individual and joint inventors, corporation to corporation. Assist with filing of provisional applications. Draft Informational Disclosure Statements. Draft and coordinate execution of Missing Parts Responses, Assignments, Petitions, Office Actions, Powers of Attorney, Declarations, and Preliminary Amendments. Draft Assignment Recordation, Issue fee, Request for Extensions of Time, Requests for corrected documents and perform status checks. Draft Maintenance Fee transmittal documents and maintenance fee reminder letters to client and reminder letters to client regarding outstanding items and duty to disclose and other reporting letters to clients. Maintain and answer to calendar of due dates for responses, maintenance fees, annuity fees, and working requirements. Review issued patents.Preliminary review of Restriction Requirements/Office Actions; draft “shell” response including pending claims. Direct contact with attorneys, clients and Patent Office. Draft reporting letters to client. File National and Regional Phase applications in PCT countries. Direct file applications in foreign countries. Legalize foreign documents. Coordinate execution of foreign Powers of Attorney and Assignments by Client. Draft documents and responses related to PCT Applications, Request, Demand for Preliminary Examination, and response to Defects and Appointments of Agents. Maintain and instruct on payment of foreign annuities. Draft filing instructions, fee letters, reminder and reporting letters and correspond with foreign associates. Draft Requests for Extensions of Time. Draft fee transmittal documents.Review Search Reports, Examination reports and Written Opinions. Conduct database searches for patent, assignment, and security lien status. Assist transactional teams with searches. Assist with IPO. Assist with documents required by SEC and FDA. Respond to various client requests. Prepare and maintain patent status charts. Prepare and index notebooks on individual technologies. Maintain close direct client relationship. Index Pleadings. Draft Pleadings. Index foreign oppositions and prepare responses. Communicate with Counsel.

Qualification and Experience

Requirements: A four year college education and knowledge of legal principles and practices at a level normally acquired through formal paralegal training or its equivalent. Ability to organize and prioritize numerous tasks and complete them under time constraints. Ability to proofread typed material for contextual, grammatical, formatting, typographical or spelling errors. Excellent interpersonal skills necessary to communicate and carry out the instructions given by a diverse group of clients, attorneys and staff; and provide information with ordinary courtesy and tact. Excellent oral and written communication skills required. Maintain accurate time records and use appropriate descriptions of work. Knowledge of PCT Rules and Regulations. Knowledge of individual country laws.

Company info

Hiring Coordinator
King & Spalding.
1185 Avenue of the Americas
New York City, NY 10036-4003


"Law Firm that Has Support"

Current Employee - Reviewed on December 16, 2017

The firm should focus on increasing the salary of employees. The varied work schedule is something the firm should continue to offer. The firm should offer guidance to employees who want to advance in their careers.

Pros : The law firm has created an environment in which the employees make themselves available to offer support to one another. The hours of work may vary and gives opportunities to balance both work and life as working from home is an option.
Cons : The law firm does fall short in offering a more interesting degree of work. The wage amount per work is very low. The firm does not do a great job of guiding employees through careers and what is required from them.
Current or former employee? : Current Employee

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