Boutique Intellectual Property Law Firm - Seeking a confident, experienced IP Paralegal with a minimum of 3-5 years experience. This position requires exceptional proficiency with U.S., Foreign, National Phase, and PCT patent prosecution. IP Paralegals prepare and file patent applications, Responses to Office Actions, Foreign Filing Licenses and other various documents required in the preparation and filing of such matters. The IP Paralegal will prepare and send correspondence and billing to clients related to filings and upcoming deadlines and coordinate with clients, inventors, and foreign associates for document signatures.
This is a remote position with a Monday - Friday schedule.
Responsibilities
- Prepare, format and e-file U.S., Foreign, Phase, and PCT patent applications (including ADS, Preliminary Amendments, Article 19 Amendments with WIPO, Declarations, IDS’s, Assignments, Powers of Attorney, Responses to Office Actions, Foreign Filing Licenses Translations, etc.)
- Monitor prosecution of non-U.S. patent applications and identify prior art for citation in the counterpart U.S. patent application
- Review and process incoming correspondence from outside counsel, foreign associates, USPTO and WIPO
- Prepare prior art identification and citation (including the preparation of information disclosure statements)
- Coordinate patent filings outside the U.S.
- Prepare status reports for individual client portfolios
- Maintain an up-to-date knowledge of IP rules and procedures
- Excellent interpersonal, organizational and communication skills and ability to communicate clearly, both written and verbal
- Strong attention to detail with the ability to manage multiple tasks simultaneously
- Sound judgment and ability to respect, protect and maintain highly confidential and sensitive information
- Obtain authentication documents (i.e., certified copies) as necessary for filing
- Arrange necessary translations
- Proficient with IP docketing
Required Experience
- 3+ years of IP paralegal experience in an IP law firm
- Extensive knowledge of patent prosecution concepts, processes, and practices.
- Independently prepare, format and e-file U.S., Foreign, National Phase, and PCT patent applications including ADS, Preliminary Amendments, Article 19 Amendments with WIPO, Declarations, IDS’s, Assignments, Powers of Attorney, Responses to Office Actions, Foreign Filing License, and translations.
- Proficient preparing and filing a variety of applications (provisional, non-provisional, Patent Cooperation Treaty, Divisional, Continuation, etc.)
- Detailed oriented
- Dependable and reliable
- Accurately determine due dates, extensions of time, patent terms, etc.
- knowledgeable with annuities and maintenance fees
The ideal candidate
- 7+ years IP law firm experience with all aspects of IP filings
- Docket experience
- Detail-oriented and organized
- Efficiently prioritizes their work
- Maintains effective communication with colleagues
- Proficient with technology and Internet research tools
- Knows when to be self-directed and when to ask for direction
- Works both independently and as part a team
- Dependable and reliable
- Confident with their work product
- Strong work ethic
- Experience with PerfectLaw and Anaqua platforms
Preferred Education
- Bachelor's Degree
- Paralegal Degree/Certificate
Benefits
Health Insurance
Dental Insurance
Vision Insurance
Life Insurance
Short Term Disability Insurance
Long Term Disability Insurance
Aflac insurance options
Health Savings Account
Flexible Spending Account
Paid Holidays
Vacation Time
Safe Harbor 401(k) - no waiting period for employee contribution
Profit Sharing
Job Type: Full-time
Pay: $75,000.00 - $85,000.00 per year
Benefits:
- 401(k)
- Dental insurance
- Disability insurance
- Flexible spending account
- Health insurance
- Health savings account
- Life insurance
- Paid sick time
- Paid time off
- Profit sharing
- Vision insurance
Schedule:
Application Question(s):
- Do you have a minimum of 3 years, foreign and domestic IP experience in a law firm ?
Work Location: Remote