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Organization TypeLaw Firm
Years of Experience
Date Last Verified
Patent Specialist The candidate under the supervision of attorneys, the Patent Specialist will provide support for all types of U.S. and foreign patent activities. Operate as part of a team of attorneys and support staff and will assume ownership for all aspects of file management to ensure a high level of service to both internal and external clients. Assist in filing of U.S., PCT and foreign regional patent applications and responses, both electronically and in paper formats (including preparation and review of necessary filing documents). Overall support for all aspects of portfolio management. Effect national phase entry of PCT applications, and prepare and file continuing applications. Correspond with foreign associates and preparation of reporting letters to client. Assist in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices, proofreading and forwarding patent certificates. Draft detailed communications to clients reporting Office Actions. Review and manage docket for deadlines, understand docket and deadlines and action needed on each file. Assist in patent filing strategy discussions and due diligence. Communicate with appropriate attorneys and team members about docket. Utilize Case Assistants or contract resources to prepare and file Information Disclosure Statements ensuring accuracy and consistency in work product. Performing PTA calculations and requests for correction. Maintain accurate daily time records for client billing purposes.
Qualification and Experience
A Paralegal certificate from ABA approved program preferred. Four year degree or equivalent law firm experience preferred. Should have 3 yearsâ€™ experience as a patent prosecution paralegal, legal secretary or comparable position with experience working in a law firm or in house legal environment. Experience with Electronic Filing USPTO procedures is required. Should have Knowledge and experience of the Inter Parte Review (IPR) process and patent litigation is desired. Strong knowledge of Microsoft Word and other comparable document production software such as PowerPoint, Excel, Timekeeping Software, Scanning and Microsoft Outlook. Must be familiar with USPTO (U.S. Patent and Trademark Office) Procedures, Rules and Requirements. Should have knowledge of U.S. and PCT patent rules and procedure; knowledge of national laws of other countries; knowledge of Paris Convention and deadlines set therein. Must have knowledge of various Courts systems and filing requirements. Should have 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. Must have excellent organizational skills and the ability to work independently, prioritize assignments and handle multiple projects simultaneously. Must have effective written and oral communication skills.
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