Job Details

Paralegal - Patent Prosecution

Company name

Organization Type

Law Firm

Job Type

Legal Staff

Date Last Verified

Jan 03, 2022

Valid Through

Apr 18, 2022

Posted on

Nov 10, 2021

Years of Experience

Min 5 yrs required

Location

Los Angeles, CA, United States

Employment Type

Full-time

Industry

Legal
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent General
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Paralegal - Patent Prosecution
The candidate will assist throughout the firm with coordinating and supporting all phases of patent prosecution matters. The individual in this role must possess extensive experience and understanding of all aspects of prosecution case support including preparing and filing patent applications and various prosecution documents via the electronic filing system (EFS-Web), document and data preservation, collection, processing, review, and document/information management systems and databases. Must demonstrate the ability to conduct legal research and complex factual investigations. Draft original correspondence and materials for communication under attorney’s signature. Within the ethical boundaries of a paralegal position, draft original correspondence to various parties and clients for signature. Draft transmittal documentation, preliminary amendments, response to missing parts, formal papers for new patent applications, Information Disclosure Statements, and submissions of issue fee payments and formal drawings, with the United States Patent and Trademark Office. Communicate with clients, government agencies/officials, foreign agents, consultants, and various other parties on a regular basis to collect and assemble information. Communicate findings to an attorney. Maintain and update file prosecution checklists. Prepares and maintains status reports and prior-art lists and charts. Record remarks in the docket system to indicate states of docketed items. Assist with transfers in and out of client’s files for the Patent Group. Review chain of title to confirm the assignment of the patent application to a client; prepare Revocation and Substitute Power of Attorney documents; file same with USPTO; prepare electronic file history; travel to other Firm offices as necessary. Thorough knowledge of all phases of the U.S. Patent Prosecution process and procedures and the U.S. Patent Office EFS-Web electronic filing system. Knowledge of international procedures and requirements is a strong plus. Superb organizational, analytical, and communications skills are a must. Ability to establish effective working relationships with Firm lawyers and staff, client personnel, and other professionals. Ability to handle multiple assignments, work well under pressure, and have the flexibility to assist the team in meeting client demands on accelerated schedules. Requires a Bachelor’s degree and a minimum of 5 years of patent experience working as a patent prosecution secretary or paralegal in a law firm or in-house legal department, or equivalent. Must have a Paralegal certificate or Attorney Attestation. Basic computer skills including Word, Excel, PowerPoint, Acrobat, and Outlook required.

Additional info

Job ID: R0003002

Company info

Hiring Coordinator
Perkins Coie LLP
1888 Century Park E
Suite 1700
Los Angeles, CA 90067-1721

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