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Carrot Peelers, Sales, Personality and Your Job Search
Law Firm
Legal Staff
Intellectual Property - Patent General
Min 5 yrs required
Patent Paralegal Duties: Provide support for all types of patent activities. will operate as part of a team of attorneys and support staff to provide a high level of service to both internal and external clients.. Review and manage docket for U.S. and foreign deadlines, understand docket and deadlines and action needed on each file. Assist in patent filing strategy discussions and due diligence. Assist in filing of U.S. and PCT patent applications, both electronically and paper (including preparation and review of necessary filing documents). File and assist in prosecution of design applications (including convention deadlines for filing abroad). Assist in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding patent certificates. Draft detailed letter to client reporting Office Actions. Prepare response to Notice to File Missing Parts. Process payment of Issue Fees. Process post allowance reviews. Draft preliminary amendments with claim identifiers. Prepare office action responses. Effect national phase entry of PCT applications, and prepare and file continuing applications. Correspond with foreign associates, oversee payment of foreign associates’ invoices, and preparation of reporting letters to client. Review files and prepare Information Disclosure Statement and accompanying documents. Track chain of title in U.S. patents and ability to perfect same. Effect portfolio transfers and manage multi-client portfolios.
Qualification and Experience
Qualifications: Four year degree, or equivalent work experience that demonstrates the ability to perform the duties of the role. 5+ years’ experience as a patent prosecution paralegal or comparable position with experience working in a law firm or in house legal environment. 5+ years’ international prosecution experience. Knowledge of filing requirements for convention (non-PCT) applications. Extensive knowledge of U.S. or PCT patent rules and procedure; knowledge of national laws of other countries. Knowledge of various Courts systems and filing requirements. 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. Ability to compose routine correspondence. Excellent organizational skills and the ability to work independently, prioritize assignments and handle multiple projects simultaneously. Maintain confidentiality of client information. Should have ability to work in fast-paced environment. Ability to perform well under pressure. Respectful to other individuals working directly or indirectly with them. Reliable and dependable team player. Must be a good planner who is very detail-oriented and has the ability to organize and prioritize. Should be action and results-oriented. Must have effective written and oral communication skills. Ability to work independently and take initiative to move projects to conclusion.
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