Trustpoint.One is assisting a top law firm in its search for a Patent Paralegal to work in the firm’s Chicago office. The position has hybrid flexibility in a collegial environment.
Patent Paralegal Responsibilities:
- Assist with preparation, filing, prosecution and maintenance of all patent applications and patents (US, PCT, and foreign)
- Knowledgeable of electronic filings via Patent Center, EFS-Web, EPAS, with the USPTO and ePCT with the IB
- Manage worldwide client patent portfolios
- Research the MPEP for solutions to procedural questions
- Prepare Information Disclosure Statements (IDS); ability to analyze families and related cases to prepare Supplemental IDSs when needed
- Assist with the preparation of routine correspondence to clients and foreign associates
- Prepare foreign filing cost estimates
- Pay maintenance fees and other renewal/annuity costs
- Prepare reports, charts, and/or other lists of patent-related information upon client or attorney request
- Coordinate with attorneys and accounting department to assist with complicated billing inquiries, as needed
- Assist in due diligence projects as needed
- Proactively manage patent prosecution dockets; monitor and follow-up on dates associated with the US and foreign patent prosecution docket, including clearing dates and providing follow-up with attorneys, clients, and foreign associates in order to provide adequate time to respond
- Provide support to IP team members with special projects and overflow of routine responsibilities
- Maintain electronic files; ensuring all documents and correspondence are properly stored in the firm’s electronic document management systems
- Maintain positive relations with internal clients and co-workers and contribute to the self-directed team structure to assist with overflow and specialized tasks within guidelines set.
Qualifications:
- Bachelor’s Degree. Paralegal certificate is a plus
- Minimum of three years of patent administration or paralegal experience, preferably in a law firm
- Must be highly knowledgeable of US, PCT, and foreign patent procedure and formality requirements; must have ability to prepare corrective patent documents and handle formalities responses (e.g. updating applicant, correcting filing receipts, responding to Missing Parts and Corrected Papers) with minimal attorney oversight
- Additional knowledge of trademark prosecution and/or IP litigation experience is a plus
- Experience with Microsoft Office Suite and Adobe Pro required
- Familiarity with CPi docketing software a plus
- Excellent time management skills and ability to work in high pressure environments; ability to shift priorities quickly without compromising deadlines or quality
- Ability to be proactive and to identify and address problems quickly
- Excellent clerical skills and knowledge of grammar, spelling and punctuation
- Exceptional attention to detail and ability to work independently
- Computer proficient, intermediate or advanced experience using Microsoft Office products such as Word, Excel, and PowerPoint.
All candidates must be able to work at a computer screen for a sustained amount of time.
Trustpoint.One provides equal employment opportunities to all employees and applicants for employment and prohibits discrimination and harassment of any type without regard to race, color, religion, age, sex, national origin, disability status, genetics, protected veteran status, sexual orientation, gender identity or expression, or any other characteristic protected by federal, state or local laws. This policy applies to all terms and conditions of employment, including recruiting, hiring, placement, promotion, termination, layoff, recall, transfer, leaves of absence, compensation and training.
Qualified Patent Paralegals should submit a resume in Word format.
Job Type: Full-time
Pay: $65,000.00 - $120,000.00 per year
Benefits:
- 401(k)
- Dental insurance
- Health insurance
- Life insurance
- Paid time off
- Vision insurance
Work Location: Hybrid remote in Chicago, IL 60606
