A full-service, leading global law firm, is seeking a US Patent Paralegal for the IP Department in the NY office.
Essential Duties and Responsibilities:
• Follow U.S. docketing deadlines; ability to docket completion of filings.
• Prepare all forms for electronic filing with the USPTO; Electronically File documents with the USPTO; Report filings to clients.
• Filing provisional, design, divisional, continuation/in/part applications, and national phase U.S. applications; proofreading of patent applications, if needed; reporting same to clients.
• Tracking and preparing Declaration, Power of Attorney, and 3.73(b)/Assignment for U.S. applications with reminders if necessary; tracking and preparing all responses to Notices for missing parts or Corrected
Application Papers, with reminders if necessary; recordation of assignments; requesting updated filing receipts when needed.
• Preparation of preliminary amendments, substitute specifications, forms for responses amendments to Restriction Requirements, Office Actions, and other miscellaneous communications (including Petitions) with
the USPTO; reporting same to clients.
• Preparation, filing, and reporting of Information Disclosure Statements.
• Review and client reporting of the Notice of Publication, Issue Notification, Letters Patent; prepare Certificates of Correction.
• Tracking, preparing, filing, and reporting all responses to Notice of Allowance/issue fees, with reminders if necessary.
• Client Status reports – both U.S. and foreign – as requested.
• Maintain PTO Customer Nos.; maintain atty individual PKI certificates as needed.
Job knowledge, Skills and Abilities:
• Familiarity with procedures for billable time in time tracking program such as CD Entry, CPI docketing program, and Filesite a plus. Also, familiarity with Microsoft Word and Excel and electronic filing with
the USPTO required.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Ability to proofread material for contextual, grammatical, typographical or spelling errors.
• Interpersonal skills necessary in order to communicate in person, by e-mail and telephone and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with
ordinary courtesy and tact.
• Work may requires more than 35 hours per week to perform the essential duties of the position, and may require irregular hours.
• Ability to operate standard office equipment such as computer, photocopiers, and fax machines.
Education and Experience Required:
• Thorough knowledge of patent docketing procedures.
• Thorough knowledge of U.S. patent prosecution procedures and PTO rules and forms.
• Minimum Bachelor’s degree or relevant work experience.
• Minimum four (4) years of work experience in a law firm environment, or related professional experience.