Intellectual Property Paralegal (Patent)

Paralegal Responsibilities:

• Advanced knowledge of US and foreign patent procedures
• Monitors progress of patent cases and patent attorney/agent dockets through use of USPTO Private PAIR, IP Management Software and Document Management System
• Demonstrated efficient workload prioritization including the ability to efficiently manage multiple heavy dockets, multiple tasks, and e-mail workload including outside counsel e-mail review
• Reviews patent application files to check for compliance with USPTO requirements and Client department standards, takes initiative to resolve discrepancies
• Expert knowledge and working experience of the USPTO EFS web filing system in order to independently draft and prepare simple to moderately complex patent legal documents for submission to the USPTO including (but not limited to) patent applications, figures, sequence listings, amendments, information disclosure statements, office action responses, requests for continued examination, notices of appeal, reply briefs, allowance checklists, allowed claims, issue fee payments, etc.
• Knowledge and expertise to customize/suggest language changes on forms as applicable to specific patent prosecution need
• Identifies patent legal issues and/or problems based on knowledge of PTO procedures and suggests and/or takes initiative to resolve
• Advanced skills to independently draft and assist with attorney responses to worldwide foreign patent agents\
• Frequent use and familiarity with the Code of Federal Regulations (Title 37) and the Manual of Patent Examining Procedure (MPEP) to enable ability to identify legal issues/problems based on knowledge of PTO procedures
• Performs Patent Term Adjustment review and analysis and delivery of analysis summary to patent attorney/agent
• Advanced oral, writing and communication skills
• Excellent organizational and accountability skills, takes initiative to follow up with inventors, counsel and agents to meet critical deadline dates
• Sets own high standards of performance and works to exceed standards; takes initiative to expand own knowledge of PTO rules.
• Assists with onboarding and mentoring legal assistants and paralegals
• Frequently provides backup and support to legal assistants and paralegals.
  Demonstrated track record and valued resource to management
  General
• Expert knowledge of Microsoft Office 2013 including Outlook, Word, Excel
• Advanced knowledge of IP Management Software and Document Management Software
• Advanced form editing capability in Adobe Acrobat Pro
• Proficient in use of basic to advanced forms including IP Management Software generated forms.
• Strong skills and experience with Patent-In software to generate sequence listings;
• Expert knowledge of domestic and foreign patent databases, e.g., PCT Scope; EPO Online, etc.
• Proficient with reference management including searching, procurement of patent references (U.S. and Foreign patents, journal articles) and familiarity with reference linking within IP management software or document management system.
• Proficient edit capability in Chemdraw
• Ability to quickly learn and adapt to new software, processes and workflows in order to perform efficiently.
• Timely and efficient communicator with patent attorneys/agents, outside counsel firms, team members, cross-functional groups and stakeholders

Administrative:

• Process and reconcile expense reports
• Experienced and organized travel arranger
• Organizes small and large group meetings for attorneys/agents including meeting agenda and meeting minutes preparation