A well-respected and established regional law firm is seeking an IP Patent Paralegal to join their team. The IP Patent Paralegal will provide technical and administrative support to attorneys, patent agents, technical specialists and clients in all aspects of patent prosecution. This position reports to the firm’s Partners and is 100% remote after the initial training period on premise in Pasadena. There is no billing requirement for IP Paralegal
IP Patent Paralegal Responsibilities include:
- Prepare related client correspondence in accordance with firm/client guidelines to report accurately and timely, respond to client inquiries and requests, and provide status reports as directed.
- Draft correspondence to clients regarding status of applications and patents, and reporting Office Actions.
- Correspond with foreign associates; oversee payment of foreign associates’ invoices.
- Assist in preparing claim amendments, construct timelines of events, review file history, extract critical data and reconstruct portfolio.
- Other duties as assigned may include planning, directing and reviewing the work assigned to other support staff, as well as special projects designated by associates/partners.
- Assist in preparing claim amendments, constructing timelines of events, reviewing file history, extracting critical data and reconstructing portfolios.
- Occasional overtime work may be necessary.
Qualified IP Patent Paralegal should have:
- Prior applicable patent prosecution experience preferably within a law firm environment.
- Four year degree and PL training/certificate. Applicable experience may be substituted for formal education if 2 year degree and paralegal certificate.
- Knowledge of USPTO’s Electronic Filing System and patent rules and regulation, and USPTO-PAIR.
- Prior experience in executing electronic filings with the US Patent and Trademark office.
- Knowledge of US and PCT patent rules and procedures to prepare and file USPTO applications (i.e. provisional, non-provisional and continuing applications)
- Knowledge to prepare and file other relevant USPTO documents (i.e. assignments, declarations and powers of attorney), Information Disclosure Statements, preliminary amendments,
- responses, requests for continued examination, and missing parts.
- Prior experience issuing fee payments in accordance with applicable fee schedules.
- Prior experience assisting with billing (Timeslips highly desirable)
- Proficiency with Windows-based software applications (including Microsoft Office Suite and Adobe DC)
- Possess strong attention to detail with the ability to navigate multiple tasks and deadlines and ability to maintain knowledge of the status of ongoing client matters
