Patent Paralegal

Trustpoint.One • Full-time • Chicago, IL, US • 3w ago

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

- Adept at researching the MPEP for solutions to procedural questions

- 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

- 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

- 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.

Qualified candidates should submit a resume in Word format.