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Organization TypeLaw Firm
Years of Experience
Date Last Verified
Patent Paralegal The candidate will operate as part of a team of attorneys and support staff to provide a high level of service to both internal and external clients. Will review and manage docket for U.S. and foreign deadlines, understand docket and deadlines and action needed on each file. Assist in patent filing strategy discussions and due diligence. Assist in filing of U.S. and PCT patent applications, both electronically and paper (including preparation and review of necessary filing documents). File and assist in prosecution of design applications (including convention deadlines for filing abroad). Assist in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding patent certificates. Draft detailed letter to client reporting Office Actions. Prepare response to Notice to File Missing Parts. Process payment of Issue Fees. Process post allowance reviews. Draft preliminary amendments with claim identifiers. Prepare office action responses. Effect national phase entry of PCT applications, and prepare and file continuing applications. Correspond with foreign associates, oversee payment of foreign associates' invoices, and preparation of reporting letters to client. Review files and prepare Information Disclosure Statement and accompanying documents. Track chain of title in U.S. patents and ability to perfect same. Effect portfolio transfers and manage multi-client portfolios.
Qualification and Experience
The candidate should have a Four year degree or equivalent work experience. Must have 3+ years of relevant work experience in a professional environment preferred which includes progressive responsibility in managing patent matters; law firm experience desirable. Knowledge of filing requirements for convention (non-PCT) applications essential. Extensive knowledge of U.S. or PCT patent rules and procedure; knowledge of national laws of other countries needed. Knowledge of various Courts systems and filing requirements essential. High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, U.S. Patent Office Electronic Filing System, Dialog and other internet research tools needed.
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