Job Details

Patent Specialist Foreign Filing Paralegal

Company name

Organization Type

Law Firm

Job Type

Legal Staff

Date Last Verified

Oct 12,2018

Posted on

Jun 13,2018

Years of Experience

Min 5 yrs required


San Diego, CA
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent General
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Patent Specialist / Foreign Filing Paralegal Responsibilities: Candidate will work closely with the attorneys, technology specialists, Intellectual Property Section management, and staff to provide exceptional client service (both internal and external) and serve as a resource to colleagues on best practices and IP specific rules and policies. Will report to the IP Operations Manager and the Manager of Administration. Proactively manage a US and foreign patent prosecution docket ensuring all deadlines are met in an efficient, timely manner. Work closely with attorneys, technology specialists, patent agents, and staff to prepare and file US (provisional, utility, continuation, divisional, national phase, and design), PCT, and foreign applications and formal papers as needed. Prepare correspondence/documents to send to clients, foreign associates, the USPTO, and international patent offices. Work directly with clients to obtain executed assignments, declarations, powers of attorney and other formality documents. Under direct supervision of patent attorneys, assist in preparing and filing documents with the USPTO and international patent offices. Prepare and file follow-on prosecution documents as required by the USPTO and international offices. Prepare and update physical and electronic files promptly and accurately. Track, document, and enter billable time. Perform administrative duties for assigned attorneys and technology specialists as requested. Provide guidance, mentoring, and training to new staff as it relates to best practices and IP specific rules and policies. Serve as a back-up to other IP Paralegals and IP Assistants in the office as needed.

Qualification and Experience

Qualifications: Bachelor’s degree and 5+ years of US and foreign patent prosecution experience in a law firm required. Thorough knowledge of patent procedural rules and filing requirements with the USPTO, PCT, PAIR, and foreign patent practices required. Must have outstanding case management skills with a commitment to excellence and customer service. Possess excellent written and verbal communication skills. Strong organizational and administrative skills. Excellent attention to detail and ability to execute through to completion. Creative problem solving skills, reasoning ability and logical thought process. Ability to work under pressure, prioritize competing demands, meet various deadlines and respond quickly to changing priorities. Demonstrated ability to professionally interact and collaborate with colleagues at all levels. Ability to work independently and as part of a team. Outstanding sense of customer service. Enthusiastic, proactive and positive attitude. Ability to handle confidential matters with discretion. Must be self-motivated to produce quality work. High level of integrity and honesty. Excellent computer skills, including proficiency in using Microsoft Word, Outlook, Excel and PowerPoint. Ability to quickly get up to speed and master new applications and software is critical. Flexibility to work overtime when necessary.

Company info

Hiring Coordinator
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C
3580 Carmel Mountain Road
Suite 300
San Diego, CA 92130
Fax: 858-320-3001


"Large firm, Small Firm Values."

Current Employee - Reviewed on July 28, 2017

I think you are doing great. I think you need to do ever more pro bono work and show the other large firms how that is done. It is a great thing and is something to really be proud about.

Pros : I joined the firm because of the great clients they have and the reputation. They are top of the heap. But I really love this firm due to the fact that they have great teams and great people. Everyone works together. They have pro bono work that they encourage and embrace. It is a great thing to help out people who would never be able to pay for the people at the firm
Cons : Not much but they do work you to death. That is expected but it is still a very hard thing to get used to. I was working 80 hour weeks sometime and never had a break. I did enjoy it but it was a lot of work.
Current or former employee? : Current Employee

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