Patent Paralegal

Ice Miller LLP • Full-time • Chicago, Illinois, United States • $69.14k - $105.32k / year • 2m ago

Job Summary:

Ice Miller LLP is seeking a Patent Paralegal to support attorneys and agents in our Intellectual Property group. This person must be capable of working in a fast-paced environment with time-sensitive materials and maintain strict confidentiality due to the nature of the position.

Essential Job Duties:

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
Assisting 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
Adept at researching the MPEP for solutions to procedural questions
Preparing 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
Preparing foreign filing cost estimates
Paying maintenance fees and other renewal/annuity costs
Preparing reports, charts, and/or other lists of patent-related information upon client or attorney request
Coordinating with attorneys and accounting department to assist with complicated billing inquiries, as needed
Assisting 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
Maintaining 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 by the firm

Minimum Requirements:

High School diploma required
Minimum of three years of patent administration or paralegal experience, preferably in a law firm
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
Ability to perform all essential duties

Ice Miller is committed to recruiting, developing and retaining talented attorneys and professional staff from all backgrounds. In order to succeed, we take great pride in a culture of inclusion where everyone at Ice Miller feels respected, is treated fairly and has the opportunity to perform at the highest potential. Learn more about Ice Miller’s Diversity & Inclusion efforts on our website.

Ice Miller LLP is an Equal Opportunity Employer.

Candidates must have permanent authorization to work in the United States.

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