Job Details

IP Paralegal

Company name

Organization Type

Law Firm

Job Type

Legal Staff


Pittsburgh, PA

Date Last Verified

Mar 14,2018

Posted on

Mar 13,2018
Practice Area
Intellectual Property >> Intellectual Property - General
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IP Paralegal Responsibilities: Prepare all documents for filing; review new patent and trademark applications (including CONs, DIVs and CIPs); prepare filing materials such as utility and fee transmittals, application data sheets and requests for non-publication (US/foreign). Upload and file all filing, application, amendment, issuance, assignment, maintenance and other materials. Prepare IDSs for submission to USPTO including preparation and maintenance of extensive schedules to assist in the cross-citation of references among related applications, determine art to be cited; obtain foreign references, publications, translations of non-English. Effect national phase entry of PCT applications, and prepare and file continuing applications. Manage interaction with foreign associates regarding the client’s intellectual property, including review of correspondence from foreign associate or client, determine course of action, and prepare instruction letters and other responses where appropriate for foreign associates. Search USPTO for status of pending applications, issued patents/registered trademarks, patent re-examinations, maintenance fee payments, details to calculate patent expiration, first office action prediction, and assignments. Utilize Internet-based research sources including USPTO, EPO, WIPO, US Copyright Office Courtlink, CSC, Delphion, DialogClassic, INPADOC, LexisNexis, PACER, Questel; SAEGIS. Relative to patents and trademarks, perform advanced on-line searches of industry databases and general legal research as well as conduct due diligence and summarize findings, update research as needed. Review docket for deadlines, understand docket and deadlines and action needed on each file; inform responsible lawyer(s) of deadlines, file status inquiries to determine status of application. Assist in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding Letters Patent. Process payment of Issue Fees. Track and perfect chain of title in U.S. patents. File and assist in prosecution of design applications; conduct litigation-based searches including dockets, pleadings, case law and citations-summarizes findings. Effect portfolio transfers.

Qualification and Experience

Qualifications: An undergraduate degree and must possess strong organizational, communication, writing and research skills. Advanced knowledge and understanding of rules and procedures of the USPTO, PCT and other international governing bodies. Experience in on-line IP database searching (especially USPTO patent databases). Previous and direct use of docketing software is a plus. Effective written and oral communication skills. High attention to detail. Excellent organizational skills, including the ability to work productively under pressure, manage multiple priorities, track extensive deadlines. Proficiency with technology including Microsoft office suite applications, specifically Word, Excel, Adobe.

Additional info

Job ID: 6151

Company info

Hiring Coordinator
K&L Gates LLP
210 Sixth Avenue
Pittsburgh, PA 15222-2613
Fax: 412-355-6501


" Law Firm that Appreciates"

Current Employee - Reviewed on December 16, 2017

The firm should consider re-hiring the employees that it let go. Management should really work harder in identifying valuable employees to the firm.

Pros : A law firm setting which several benefits are offered to employees that are affordable. The firm has a system in place in which employees work together alongside staff and attorneys.
Cons : The firm has lost many of its employees because they have been let go. However, many of the employees were skilled and it appears that the firm made a poor decision in letting go of the valuable employees.
Current or former employee? : Current Employee

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