Legal Staff Paralegal in Boston, MA

Law Firm

Boston, MA

Legal Staff Paralegal in Boston, MA

Legal Staff

3-5 yrs required

No

Job Title: Patent and Trademark Paralegal

Job Responsibilities:
The Patent and Trademark Paralegal at the law firm will be responsible for a wide range of duties in support of the Intellectual Property practice group. Key responsibilities include:

Patent Application and Prosecution Support:
- Prepare and electronically file various . and PCT patent documents and forms, including applications, amendments, RCEs, and other filings.
- Obtain prior art references as needed and prepare and electronically file Information Disclosure Statements.
- Record assignments with the USPTO.
- Coordinate foreign filings with international agents and manage related correspondence.
- Review and monitor official communications from the USPTO and foreign patent offices.
- Maintain patent docketing records and deadlines, ensuring timely responses to PTO and foreign office actions.
- Communicate with foreign agents regarding foreign patent applications, assess and docket necessary actions to be taken.
- Assist with invention disclosure and patent committee documentation and tracking.

Trademark Application and Prosecution Support:
- Prepare and file . trademark applications, renewals, maintenance documents, and assignments.
- Coordinate with foreign counsel on international trademark filings and renewals via the Madrid Protocol and direct filings.
- Communicate with foreign agents regarding foreign trademark applications, assess and docket necessary actions to be taken.
- Monitor and docket trademark deadlines, including office actions, oppositions, cancellation proceedings, and renewals, and communicate with clients regarding the same.
- Conduct preliminary trademark clearance searches and prepare related summaries for attorney review.

Portfolio Management:
- Maintain and update client IP portfolios using firm IP management software.
- Generate regular reports on patent and trademark statuses for internal and client use.
- Coordinate annuity and maintenance fee payments with vendors and clients.

Administrative & Support Duties:
- Manage incoming and outgoing correspondence with clients, agents, and government offices.
- Draft and review routine correspondence, declarations, and legal documents under attorney supervision.
- Prepare, maintain, and update reports for clients regarding the status of applications and patents, as well as update client dockets and send reminders to attorneys, international counsel, and clients as needed.
- Ensure the accuracy and completeness of IP records and case files in accordance with firm policies and best practices.
- Perform research and compile data as requested.

Education and Experience Information:
- An Associate’s degree is required; a Bachelor’s degree or a Paralegal Certificate from an ABA-accredited program is preferred.
- A minimum of 3–5 years of experience as an IP paralegal with significant patent and trademark docket at a law firm or in-house IP department.
- In-depth knowledge of USPTO and WIPO procedures and systems (., Patent Center, TEAS, EPAS, ePCT) and familiarity with international IP filing systems and processes.
- Experience with IP docketing systems (., Foundation IP, CPI, Anaqua, or equivalent).
- Proficiency with Microsoft Office Suite and PDF tools (., Adobe Acrobat Professional) and a working knowledge of image file editing.
- Experience using document and records management systems (., iManage).
- Excellent verbal and written skills, strong attention to detail, organizational skills, and the ability to effectively set priorities and manage multiple projects.

Salary Information:
- For the Buffalo location, the salary range is between $65,000 to $75,000, negotiable based on years of experience.
- For the Boston location, the salary range is between $78,000 to $90,000, negotiable based on years of experience.

Additional Information:
- The law firm values exceptional work products and a collegial work environment and is committed to community involvement.
- Employment offers are contingent upon satisfactory background, reference, and business conflicts checks.
- The law firm provides equal employment opportunities to all employees and applicants in accordance with law, without regard to race, color, religion, creed, national origin, age, sex, sexual orientation, gender identity or expression, marital status, military status, disability, predisposing genetic characteristics, domestic violence victim status, or any other status protected by law.