Job Details

Legal Staff Paralegal in Millburn, NJ

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Company name

Hoxie & Associates LLC

Organization Type

Law Firm

Job Type

Legal Staff

Practice Area

Intellectual Property - Patent General

Years of Experience

Min 1 yrs required


USA Millburn, NJ

Posted on

Aug 08,2018

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Patent Paralegal Responsibilities: Assist in the preparation and filing of PCT, national stage, provisional, non-provisional, and trademark applications. Review and electronic filing of Responses to Office Actions. Prepare documents and coordinate with inventors/clients to obtain executed documents for filing (i.e., Assignments, Oaths/Declarations, and Powers of Attorney). Correspond with foreign counsel and clients on a daily basis regarding formalities documents, prosecution, and renewal (maintenance/annuity) payments. Review, preparation, and filing of prior art and Information Disclosure Statements. Maintain formalities of applications and review applications to ensure formality requirements are met before applications proceed to allowance. Correspond with clients to obtain and e-file Statements of Use (Section 8 & 15 Affidavits). Draft reporting correspondence regarding prosecutorial developments. Prepare dockets and I.P. listings for clients and attorneys. Proofread publications, Letters Patent, Trademark Certificates – prepare and e-file required forms for correcting errors. Review and file documents with the U.S. Federal Circuit via CM/ECF. Utilize USPTO PAIR and TSDR, WIPO, E-Space, and foreign databases to perform routine status checks of patent and trademark applications. Assist in the preparation of trademark clearance searches. Review incoming and outgoing communications to ensure deadlines are docketed accordingly. Maintain client billing. Contact USPTO regarding case status, formality-related issues, and incoming communications. General file and database maintenance.

Qualification and Experience

Qualifications: BA/BS degree or Paralegal certificate. Patent docketing experience is a plus. Must have knowledge and relevant work experience in dealing with patent and trademark prosecution. Experience with docketing systems. In-depth knowledge of US and foreign patent procedures, rules and requirements. Must be familiar with working in a fast-paced environment and supporting multiple attorneys to ensure projects are completed in a timely manner. Working knowledge and experience with the USPTO databases and filing systems, EPO database (e.g. Espacenet), WIPO and E-PCT filing system. Familiarity with PCT-Safe and Patent-In software. Excellent written and oral communication skills. Ability to follow-up as necessary to ensure deadlines are met. Strong proficiency in Microsoft Office. Organization, attention to detail and time management.

Additional info

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Company info

Thomas Hoxie
Hoxie & Associates LLC
75 Main Street
Suite 301
Millburn, NJ 07041