Patent Prosecution Paralegal

3-5 yrs required

Full-time

No

Salary Information

The salary for this position will be commensurate with experience.


# Patent Prosecution Paralegal at Marshall Gerstein

## Job Summary

Marshall Gerstein is seeking a Patent Prosecution Paralegal to provide support to a team of attorneys in the Patent Prosecution practice area. This role will assist in the preparation and maintenance of all foreign and domestic patent applications, portfolio management, and effectively responding to all foreign and domestic correspondences in a timely manner.

## Responsibilities

- Prepare and file US patent applications (including utility, US national state, and design) with the . Patent and Trademark Office, along with patent responses and other documents including assignments.
- Prepare and file foreign patent application (including PCT, non-PCT, national stage, etc.), with the United State Receiving Office, International Bureau of WIPO or by way of communicating with foreign counsel, along with responses to Invitation to Correct Defects, Chapter II Demands and Article 10 and 34 Amendments.
- Manage and monitor daily docket of deadlines and ensure deadlines are met and system is properly updated.
- Organize, prepare, and file informational disclosure statements with the USPTO.
- Work with foreign law firms to supply appropriate materials to be filed in foreign patent application (including prior art, search and exam reports from counterpart applications, spreadsheet of counterpart applications).
- Review and respond correspondence from foreign counsel, clients and domestic outside counsel.
- Research patent-related information from multiple credible sources including the MPEP, Brown Books and Derwent for legal professionals.
- Support multiple intellectual property legal professionals.
- Complete other duties as assigned by the legal professionals.

## Qualifications

- is highly preferred.
- 3-5 years of patent prosecution experience or training within a law firm setting preferred.
- Experience with electronic research tools and patent prosecution filing systems such as WIPO, Lexis Nexis, Westlaw and USPTO.
- Ability to maintain a high level of accuracy, superior attention to detail and strong organizational skills.
- Ability to facilitate clear and concise communication with others in a positive manner.
- Ability to work with others effectively in a team that encourages diversity of thought and innovation.
- Ability to maintain a professional demeanor, exhibit sound judgment, maintain confidentiality and use discretion.
- Ability to exhibit problem-solving skills and demonstrate initiative and accountability.
- Ability to thrive in a dynamic fast paced environment with fluidity amidst multiple projects, shifting priorities and competing deadlines.
- Ability to adapt and accept changes in job responsibilities based on the strategic goals of the firm.
- Flexibility to adjust hours as necessary in order to satisfy the essential functions of the position.

## Salary Information

The salary for this position will be commensurate with experience.

## About Marshall Gerstein

Marshall Gerstein is committed to diversity, equity & inclusion and to the recruitment, retention, and advancement of the most talented and qualified professionals. We recognize that diversity at all levels of our firm, and the collective strength of our differences, enables us to better serve our clients, create enduring relationships, provide a platform for continued success, and improve both the vibrancy and innovation of our working environment.

## Join Marshall Gerstein as a Patent Prosecution Paralegal

Marshall Gerstein is seeking an experienced Patent Prosecution Paralegal to join our team in Chicago, IL. As a Patent Prosecution Paralegal, you will be responsible for preparing and maintaining all foreign and domestic patent applications, portfolio management, and effectively responding to all foreign and domestic correspondences in a timely manner. If you have 3-5 years of experience in a law firm setting and possess the knowledge, skills, and abilities outlined above, we encourage you to apply. Salary for this position is commensurate with experience.

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Preparation and filing of US patent applications, Preparation and filing of foreign patent applications, Portfolio management, Responding to foreign and domestic correspondences, Research patent-related information

Bachelor’s degree or paralegal certificate

Visit Marshall Gerstein’s website

Qualification and Experience Bachelor’s degree or paralegal certificate

Legal