JOB SUMMARY:
The Patent Paralegal – Foreign Filings provides support for patent prosecution outside the United States through the filing of applications, preparation of instructions to foreign agents, preparation of documents, and portfolio management. The role requires a comprehensive understanding of requirements and processes under the Patent Cooperation Treaty and of various jurisdictions and the ability to manage a large docket. Occasional assistance to the domestic US patent filing team may need to be provided. The Patent Paralegal works closely with legal staff, clients, and foreign agents to ensure timely and accurate handling deadlines. Overtime and flexibility in work schedule are required.
ESSENTIAL FUNCTIONS
1. Prepares and submits applications filed under the Patent Cooperation Treaty. Prepares and sends instructions to foreign agents for new applications. Assists with and advises legal staff on activities during International Phase and activities relating to prosecution.
2. Monitors external and internal deadlines for assigned matters and acts to ensure deadlines are accurately and timely handled.
3. Reviews incoming and outgoing communications. Helps ensure that firm docket and electronic file records are accurate, up to date, organized, and accessible.
4. Prepares, reviews, and edits formal papers, including powers of attorney and deeds of assignments. Orders and legalizes documents.
5. Drafts and sends client reporting letters and updates client records.
6. Assists with transfers of client portfolios into the firm, including, but not limited to, advising foreign agents of representation change and organizing files; data audits; preparation of status and docket reports; and prosecution cost estimates.
7. Assists with the onboarding of new legal and paralegal hires. Works with supervisor to train and guide other paralegals to ensure compliance with rules and laws of relevant jurisdictions and adherence to firm’s best practices.
8. Assists with firm and client projects.
9. Conducts research and stays updated on changes in laws, rules, software systems, and platforms. Alerts supervisor of changes and discusses potential impact on procedures.
10. Performs other duties including supplemental coverage for the US filing team and quality control review of filings and documents.
REQUIRED SKILLS AND CAPABILITIES:
· Thorough knowledge and understanding of foreign patent prosecution practice. Experience with life science applications is a plus.
· Excellent interpersonal and communication skills.
· Efficient and productive with excellent attention to detail and commitment to quality work product.
· Solutions-oriented mindset and proactive in problem-solving.
· Ability to plan, organize, carry out, and complete multiple tasks and projects concurrently.
· Ability to work under tight deadlines and respond quickly to shifting demands and opportunities.
· Openness to feedback and willingness to incorporate suggestions for development.
· Strong computer skills, including familiarity with advance functions in Microsoft Word, Excel, and Outlook. Ability to learn new software, services, and platforms.
· Ability to maintain a professional demeanor in all situations.
· Ability to work in a team environment and effectively with all firm employees in a multi-office environment with remote employees and across time zones.
QUALIFICATIONS
· Bachelor's degree and minimum of five years foreign patent prosecution experience or minimum of eight years foreign patent prosecution experience.
· Must be able to work overtime and a flexible schedule.
To apply, please submit your resume and cover letter to hgstaffrecruiting@hglaw.com.
The above job description is intended to describe the general content of and requirements for the performance of this job. It is not to be construed as an exhaustive statement of essential functions, responsibilities, or requirements. Firm management reserves the right to amend and change responsibilities to meet business and organizational needs.
Job Type: Full-time
Pay: $90,000.00 - $110,000.00 per year
Benefits:
- 401(k)
- Dental insurance
- Employee assistance program
- Flexible spending account
- Health insurance
- Health savings account
- Life insurance
- Paid time off
- Vision insurance
Schedule:
Experience:
- U.S. patent prosecution: 3 years (Preferred)
Work Location: Hybrid remote in San Jose, CA 95113
