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Law Firm
Legal Staff
Intellectual Property - Patent General
Min 5 yrs required
Intellectual Property Paralegal Responsibilities: Assist with preparing correspondence to foreign associates, ensuring transmission of all required documents, and work with foreign associates through compliance with local required filing formalities, including legalization of documents if necessary. Monitor status to ensure timely filing of request for examination and dates for payment of requisite maintenance fees in patent cases. Review granted patent documents to determine maintenance requirements and calculate term. Work with attorneys and clients regarding validation procedure after grant of European patents. Work with attorneys upon receipt of office actions issued by domestic offices to ensure proper instructions and timely responses in trademark cases. Filing and maintaining US trademarks. Review Certificates of Registration to determine renewal dates and use requirements in Execute searches on U.S. and international patent databases re: patent family information, ownership/inventor information and other data as needed. Work with attorneys to prepare and file applications with the USPTO with regard to formality requirements, including electronic filing of all documents with the USPTO. Monitor cases and prepare and file Information Disclosure Statements. Monitor status and work with attorneys/clients re possible priority-based PCT and/or other foreign applications. Work with attorneys to ensure timely responses to Office Actions, payment of issue fees, and submission of formal drawings. Review granted patent documents to determine maintenance requirements and calculate term.
Qualification and Experience
Qualifications: Bachelor’s degree required. 5+ years’ work experience in a law firm environment, or related professional experience. Prior experience supporting attorneys with an international intellectual property practice preferred. Must have knowledge of USPTO rules and procedures. Extensive knowledge and skills in utilizing the Internet, Adobe Acrobat, U.S. Patent Office Electronic Filing System; experience with legal research tools preferred. Working knowledge of Microsoft Office Suite, including MSWord, Outlook, Excel, PowerPoint, etc. Ability to work effectively with a wide range of individuals. Ability to organize and prioritize numerous tasks and complete them under time constraints. Ability to proofread materials for contextual, grammatical, typographical or spelling errors. Must have strong organizational, decision-making skills and problem solving skills. Must be reliable and a self-starter.
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