U.S. Patent Paralegal - Boston
Position Summary:
The U.S. Patent Paralegal will provide organizational and practice specific assistance to attorneys in the IP Prosecution Department in managing U.S. patent prosecution including related research, analysis, docketing and eFiling. Candidates should also be flexible to work overtime as needed.
Duties & Responsibilities:Manages and organizes U.S. patent docket and processes for multiple IP attorneysPrepares client formalities for execution (Declarations, Assignments & Power of Attorney)Files Provisional, U.S. Utility, Continuation, Divisional, Design & 371 national stage applications, reissue applications, and follow-up on patent prosecution submission requirements, such as response to office actions & issue fee payments with the USPTO, including formalities and Information disclosure statement with the U.S. Patent and Trademark OfficePerforms Assignment searches, Assignment recordings, and chain of title reviewsDocket management and calendaring, requiring significant awareness of and sensitivity to time management and filing deadlinesManages and updates files with USPTO Pair database and prepare responses as neededDrafts templates for Office Action ResponsesProvides client management support by maintaining client portals, updating client status charts, running various client docket reports for portfolio analysis, and communication with clients regarding upcoming U.S. patent deadlines and requests for instructions and formalities remindersCalculates Patent Term Adjustments and processes payment of Issue FeesReviews files and prepares of Information Disclosure Statements and accompanying documentsEffects portfolio transfers and manages multi-client portfoliosFiles and assists in prosecution of design applicationsProofs and edits patent applications and office actions and prepares office actionsMeets all ethical and professional requirements of the firm and keeps up to date on all learning and development requirements at the firmMeets internal and external deadlines, and successful time management, including during periods of prolonged intense work during and after regular office hoursFulfills firm administrative responsibilities, including, but not limited to, timekeeping and billing requirementsAssists with other department activities as needed, adheres to firm policies, and performs additional duties and responsibilities as assigned
Skills & Competencies:Excellent organizational skills, including the ability to perform well under pressure, manage priorities and meet deadlinesAbility to complete assignment with attention to detail and high degree of accuracyReliable and dependable team playerExercise discretion and maintain confidentiality of client informationAbility to work independently, taking initiative to move projects to conclusionPrevious experience with Filesite is a plusMust have excellent written and oral communication skillsAbility to engage in active listening, giving full attention to what other people are saying, taking time to understand the points being made, asking questions as appropriateAbility to deal calmly and effectively with high stress situations
Qualifications & Prior Experience:Minimum ten years of prior experience as a patent prosecution paralegal in a law firm or in-house legal environmentKnowledge of U.S. patent rules and proceduresHigh level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, U.S. Patent Office Electronic Filing System, and other Internet research toolsParalegal certificate from an ABA-approved program preferredFour-year degree or equivalent law firm experience preferred
The U.S. Patent Paralegal will provide organizational and practice specific assistance to attorneys in the IP Prosecution Department in managing U.S. patent prosecution including related research, analysis, docketing and eFiling. Candidates should also be flexible to work overtime as needed.
Duties & Responsibilities:Manages and organizes U.S. patent docket and processes for multiple IP attorneysPrepares client formalities for execution (Declarations, Assignments & Power of Attorney)Files Provisional, U.S. Utility, Continuation, Divisional, Design & 371 national stage applications, reissue applications, and follow-up on patent prosecution submission requirements, such as response to office actions & issue fee payments with the USPTO, including formalities and Information disclosure statement with the U.S. Patent and Trademark OfficePerforms Assignment searches, Assignment recordings, and chain of title reviewsDocket management and calendaring, requiring significant awareness of and sensitivity to time management and filing deadlinesManages and updates files with USPTO Pair database and prepare responses as neededDrafts templates for Office Action ResponsesProvides client management support by maintaining client portals, updating client status charts, running various client docket reports for portfolio analysis, and communication with clients regarding upcoming U.S. patent deadlines and requests for instructions and formalities remindersCalculates Patent Term Adjustments and processes payment of Issue FeesReviews files and prepares of Information Disclosure Statements and accompanying documentsEffects portfolio transfers and manages multi-client portfoliosFiles and assists in prosecution of design applicationsProofs and edits patent applications and office actions and prepares office actionsMeets all ethical and professional requirements of the firm and keeps up to date on all learning and development requirements at the firmMeets internal and external deadlines, and successful time management, including during periods of prolonged intense work during and after regular office hoursFulfills firm administrative responsibilities, including, but not limited to, timekeeping and billing requirementsAssists with other department activities as needed, adheres to firm policies, and performs additional duties and responsibilities as assigned
Skills & Competencies:Excellent organizational skills, including the ability to perform well under pressure, manage priorities and meet deadlinesAbility to complete assignment with attention to detail and high degree of accuracyReliable and dependable team playerExercise discretion and maintain confidentiality of client informationAbility to work independently, taking initiative to move projects to conclusionPrevious experience with Filesite is a plusMust have excellent written and oral communication skillsAbility to engage in active listening, giving full attention to what other people are saying, taking time to understand the points being made, asking questions as appropriateAbility to deal calmly and effectively with high stress situations
Qualifications & Prior Experience:Minimum ten years of prior experience as a patent prosecution paralegal in a law firm or in-house legal environmentKnowledge of U.S. patent rules and proceduresHigh level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, U.S. Patent Office Electronic Filing System, and other Internet research toolsParalegal certificate from an ABA-approved program preferredFour-year degree or equivalent law firm experience preferred