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Organization TypeLaw Firm
Years of Experience
Date Last Verified
Patent/IP Paralegal Duties: 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. May include some or all of the following, depending upon the applicant’s qualifications. 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
Qualifications: Four-year degree and completion of a paralegal program of study, or clear demonstration of equivalent knowledge and skill. 4+ years’ experience as an intellectual property/patent paralegal, with a significant focus on foreign prosecution. Skills and Abilities: 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. Knowledge of Paris Convention rules, PCT rules and procedures, and country law related to patents. Advanced proficiency in Internet research skills and use of Microsoft Office computerized business applications (e.g., Word, Excel, and Outlook). Ability to perform complex tasks and work independently with minimal guidance from attorneys, patent agents and/or scientific advisors. Highly professional writing skill with ability to convey substantive content clearly and concisely. Highly developed skill in time and task management, with ability to organize assignments, work calmly under pressure and meet deadlines. Ability and desire to exercise initiative and independent responsibility. Ability and desire to work closely and collaboratively with colleagues. Highly developed attention to detail in striving for perfection in work product and client service. Ability to protect client confidentiality in compliance with rules of ethics and firm policy. Availability and willingness to travel, if needed. Availability and willingness to work extended or flexible hours as needed to accommodate client needs.
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