IP Patent Prosecution Paralegal

Profile

This firm is very strong in most practice groups, and in our opinion is an excellent firm to work for. The firm has a long history, and has managed to draw some well-known political figures into its partnership ranks. The associates we have spoken with at this firm describe it as a good place to work and for the most part the associates working here believe that the partners are friendly and accessible. Additionally, the people who work at this firm are all fairly friendly; however, some associates we have spoken with have told us that there appears to be an air of formality to their friendliness. While the Firm does not always get high marks for diversity, much of that has changed in recent years. Additionally, this firm consistently ranks near the top for quality of life issues and the associates who work here all seem to be fairly enthusiastic about the quality of life of the firm. This firm compensates its associates very well, and there are few complaints about compensation issues. While the firm does have a flex time program, many of the associates we have spoken with do not appear that pleased with the program and believe it could use improvement. We should note that one thing that is notable about this firm is that it does appear very well positioned at most times because it is consistently able to generate work and keep its associates in most departments busy. IP Patent Prosecution Paralegal Duties: Under the supervision of lawyers from the IP Department, will provide support for all levels of the patent process. Will operate as part of a team comprised of lawyers and staff with the goal to provide high level service to both internal and external clients. Follow U.S. docketing deadlines; ability to docket completion of filings. Prepare all forms for electronic filing with the USPTO; Electronically File documents with the USPTO; Report filings to clients. Filing provisional, design, divisional, continuation/in/part applications, and national phase U.S. applications; proofreading of patent applications, if needed; reporting same to clients. Tracking and preparing Declaration, Power of Attorney, and 3.73(b)/Assignment for U.S. applications with reminders if necessary; tracking and preparing all responses to Notices for missing parts or Corrected Application Papers, with reminders if necessary; recordation of assignments; requesting updated filing receipts when needed. Preparation of preliminary amendments, substitute specifications, forms for responses amendments to Restriction Requirements, Office Actions, and other miscellaneous communications (including Petitions) with the USPTO; reporting same to clients. Preparation, filing, and reporting of Information Disclosure Statements. Review and client reporting of the Notice of Publication, Issue Notification, Letters Patent; prepare Certificates of Correction. Tracking, preparing, filing, and reporting all responses to Notice of Allowance/issue fees, with reminders if necessary. Client Status reports - both U.S. and foreign as requested. Maintain PTO Customer Nos.; maintain attorney individual PKI certificates as needed.

Requirements: Bachelor degree or relevant work experience. 4+ years of work experience in a law firm environment, or related professional experience. Familiarity with procedures for billable time in time tracking program such as CD Entry, CPI docketing program, and Filesite a plus. Also, familiarity with Microsoft Word and Excel and electronic filing with the USPTO required. Ability to organize and prioritize numerous tasks and complete them under time constraints. Ability to proofread material for contextual, grammatical, typographical or spelling errors. Interpersonal skills necessary in order to communicate in person, by e-mail and telephone and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with ordinary courtesy and tact. Work may require more than 35 hours per week to perform the essential duties of the position and may require irregular hours. Ability to operate standard office equipment such as computer, photocopiers, and fax machines. Thorough knowledge of patent docketing procedures. Thorough knowledge of U.S. patent prosecution procedures and PTO rules and forms.

Company info

Law Firm Staff