Please send resume in WORD format should you be interested in the
following Patent Prosecution Paralegal position located in
Washington DC. This is a full-time, direct-hire position with a
salary between 100-110K with OT and awesome benefits. If you are
not interested, please forward to your colleagues as we do pay
referral fees.
Job Title: Patent Prosecution Paralegal
Location: Washington DC
Salary: 100-110K plus OT
Work Environment: 3 days in office per week
Minimum Billable hour requirement: 1,500/year
Reports to: Director of Paralegal Services (based in NYC)
Job Overview:
Our client is looking to hire a Paralegal to support the
Intellectual Property Group with regard to all patent prosecution
matters. The Paralegal will be responsive and ensure that all
documents received from clients, foreign agents, official US
Patent and Trademark Office documents and other government
agencies have been responded to timely and accurately under
established policies and procedures; and exercises discretion and
confidentiality in maintaining contact with clients, attorneys
and staff.
This role has a hybrid working arrangement. Potential candidates
must live within commuting distance of DC to be onsite 3 days per
week. In this role, you will report to the Director of Paralegal
Services.
Essential Functions
* Monitor and follow-up on foreign patents, including clearing
dates and following-up with attorneys, clients, and management to
provide adequate time to respond.
* Preparing transmittals for and filing U.S. provisional
applications and reporting same to internal departments and the
client
* Preparing and filing U.S. non-provisional applications,
including initial, continuation and divisional applications, and
reporting same to internal departments and the client
* Work with attorneys in keeping abreast of all rules and
regulations and procedures for filing foreign/PCT patent
applications including all formalities related thereto.
* Prepare cost estimates for filing and maintenance of foreign
patents.
* Maintain an understanding of legalization procedures in city,
county, state and country; correspond with government, state and
embassy officials; and prepare documents including appropriate
fees, when necessary.
* Prepare and transmit applications to foreign agents or
government agencies, including entry into National Phase.
* Prepare and forward official documents to clients and handle
appropriate legalization through completion of filing.
* Receive and act upon client instructions, including
confirmation and/or draft response to client inquiries related to
foreign filing and formalities of foreign/PCT applications.
* Draft, proofread, photocopy, scan documents into the firm’s
document management system and assemble correspondence as needed.
* Respond to questions and problems from the staff members and
attorneys in relation to foreign/PCT filings including US
prosecution.
* Maintain a working knowledge of client’s special instructions
and prepare appropriate correspondence to clients.
* Organize and provide follow-up to meet deadlines by working
closely with the attorney and/or client, as assigned to a case.
* Work with firm members to assist in the auditing of
transfer-in-matters and completion of transfer-out projects,
including file and docket review for foreign matters.
* Perform other responsibilities as assigned.
* Work additional hours as needed to fulfill job requirements.
Skills/Qualifications
* 5+ years of paralegal experience, specifically with
intellectual property law including foreign and US filings,
patent docket management and application filings.
* Bachelor’s degree, paralegal certification, or equivalent work
experience required.
* Experience in a legal environment or professional services
required.
* Thorough knowledge and understanding of international patent
matters, including US rules of practice.
* Strong understanding of IP to ensure a high quality and
accurate work product.
* Ability to compose, proofread and edit (e.g., punctuation,
grammar, spelling) routine memorandums and correspondence.
* Strong communication skills (verbal and written) with the
ability to develop positive working relationships (in-person and
virtually).
* Ability to identify and analyze complex problems to recommend
and implement solutions.
* Ability to work under pressure while producing a high volume of
information with attention to detail while producing an accurate
document.
* Strong PC knowledge to utilize various online electronic
filings with government agencies and to maintain worksheets for
clients, including knowledge of MS Excel.
* Ability to research and search various websites to locate
information to communicate with client or to maintain accurate
information in the firm’s various software applications
associated with IP matters.
* Strong communication skills (verbal and written) with the
ability to develop positive working relationships (in-person and
virtually).
* Meticulous attention to detail and accuracy.
* Ability to manage multiple tasks with effective organizational
skills.
* Proven problem solving, critical thinking, and decision-making
skills.
* Unquestioned integrity and professionalism.
* Proficient in Microsoft Suite (Word, Excel, Outlook, Teams).
* Proficient in web-based conference call/web-sharing
applications.
