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Foreign Filing Paralegal / Legal Practice Assistant The candidate will support members of the Intellectual Property Practice Group focused on patent prosecution. Be versed in all facets of patent prosecution, including US, PCT, non-PCT convention, and national stage filings. Manage US and foreign patent prosecution dockets 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 US, PCT, foreign, and 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 US foreign patent cost estimates. Prepare formal papers and other miscellaneous documents as needed. Prepare client reporting letters and foreign attorney instruction letters. Communicate directly with clients, foreign attorneys, USPTO, and the International Bureau of WIPO under the direction of a patent attorney or agent. Proof work product before presenting to an 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. Review and forwards 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 strives to meet billable target. Assume additional responsibilities as requested.
The candidate should have a Bachelor's degree and 2-5 years of experience in a law firm environment with patent docketing and prosecution administration; or an equivalent combination of education and experience with Intellectual Property filing and prosecution rules and regulations. Should have working knowledge of PCT and foreign patent rules, filing requirements, and forms. Experience working in PAIR and e-filing with the USPTO Receiving Office. Must have the ability to work independently and as part of a team with great attention to detail, interacting with all levels of firm personnel and with clients. Should have excellent computer skills, including proficiency in using MS Word, Outlook, Excel and PowerPoint. The ability to quickly get up to speed and master new applications and software is critical. Should have the flexibility to work overtime when necessary. Note: The regular work schedule for this position is 11:30-7 PM EST or 8:30-5 PM PST.
