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Organization TypeLaw Firm
Date Last Verified
Years of Experience
ProfilePatent Specialist / Foreign Filing Paralegal Responsibilities: Proactively manage a foreign patent prosecution docket ensuring all deadlines are met in an efficient, timely manner. Communicate appropriate information to Docketing daily and respond as soon as possible to all Docketing inquiries. Work closely with attorneys, technology specialists, and staff to prepare and file PCT, foreign, and US national phase patent applications and formal papers as needed. Prepare correspondence/documents to send to clients, foreign associates, the US Receiving Office, and international patent offices. Work directly with clients to obtain executed assignments, declarations, powers of attorney and other documents. Prepare foreign patent cost estimates. Prepare formal papers, and other miscellaneous documents as needed. Prepare client reporting letters, foreign attorney instruction letters. Learn, adhere to, and uphold firm standards and procedures. Communicate directly with clients, foreign attorneys, USPTO and International Bureau of WIPO under the direction of a patent attorney or agent. Double check work product before presenting to attorney for review, and again before sending or filing. Ensure that client-matter numbers are opened according to the IP Section’s guidelines and before work is started. Timely review and forward annuity information to the annuity paralegal and foreign attorney invoices to Finance. Maintain neat and orderly foreign patent files. Record time daily in Intapp and strive to meet billable target. Perform additional responsibilities as requested.
Qualification and Experience
Qualifications: Bachelor’s degree required. 5+ years of patent prosecution experience in a law firm required. Solid experience and working knowledge of PCT and foreign patent rules, filing requirements, and forms. Must have experience working in PAIR and e-filing with the USPTO Receiving Office. Experience with IPDAS and Foundation IP preferred. 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 and meet various deadlines. 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.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C
3580 Carmel Mountain Road
San Diego, CA 92130
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