Intellectual Property Paralegal

Core 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 Patent Center, 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

Qualifications/Skills

• Organization, attention to detail and time management
• Excellent written and oral communication skills
• Ability to follow-up as necessary to ensure deadlines are met
• Strong proficiency in Microsoft Office and Adobe applications
• Working knowledge and experience with the USPTO databases and filing systems, EPO database (e.g. Espacenet), WIPO and E-PCT filing system is a plus
• Experience with docketing systems, although not necessary, is a plus
• In-depth knowledge of US and foreign patent procedures, rules and requirements is preferred
• AI proficiency and use is not necessary
• BA/BS degree or Paralegal certificate is preferred

Company Benefits/Perks

• 401(k)
• Dental insurance
• Health insurance
• Paid Time Off
• Paid Sick Leave