Patent Prosecution Paralegal

Title Patent Prosecution Paralegal
Categories Paralegals
Job ID 2266
Location NYC
Job Information

Our client, a top law firm in NYC is seeking a Patent Prosecution Paralegal to join their firm.
U. S. Patent Prosecution Edit and format specifications.
Draft simple Visio drawings.
Draft provisional, non-provisional and design application transmittal papers.
Draft assignments including individual and joint inventors, corporation to corporation.
Assist with filing of provisional applications. Draft Informational Disclosure Statements.
Draft and coordinate execution of Missing Parts Responses, Assignments, Petitions, Office Actions, Powers of Attorney, Declarations, and Preliminary Amendments.
Draft Assignment Recordation, Issue fee, Request for Extensions of Time, Requests for corrected documents and perform status checks.
Draft Maintenance Fee transmittal documents and maintenance fee reminder letters to client and reminder letters to client regarding outstanding items and duty to disclose and other reporting letters to clients. Maintain and answer to calendar of due dates for responses, maintenance fees, annuity fees, and working requirements.
Review issued patents.
Preliminary review of Restriction Requirements/Office Actions; draft “shell” response including pending claims.
Direct contact with attorneys, clients and Patent Office.
Draft reporting letters to client.
Foreign Patent Prosecution File National and Regional Phase applications in PCT countries.
Direct file applications in foreign countries.
Legalize foreign documents.
Coordinate execution of foreign Powers of Attorney and Assignments by Client.
Draft documents and responses related to PCT Applications, Request, Demand for Preliminary Examination, and response to Defects and Appointments of Agents.
Maintain and instruct on payment of foreign annuities.
Draft filing instructions, fee letters, reminder and reporting letters and correspond with foreign associates.
Knowledge of PCT Rules and Regulations.
Knowledge of individual country laws.
Draft Requests for Extensions of Time.
Draft fee transmittal documents.
Review Search Reports, Examination reports and Written Opinions.
Due Diligence Conduct database searches for patent, assignment, and security lien status. Assist transactional teams with searches.
Assist with IPO.
Assist with documents required by SEC and FDA.
Client Relations Respond to various client requests.
Prepare and maintain patent status charts.
Prepare and index notebooks on individual technologies.
Maintain close direct client relationship.
Patent Office Interparty Proceedings and Foreign Opposition Index Pleadings.
Draft Pleadings.
Index foreign oppositions and prepare responses.
Communicate with Counsel.
A four year college education and knowledge of legal principles and practices at a level normally acquired through formal paralegal training or its equivalent.
Available to work a minimum of 7.5 hours per day, 5 days a week Monday – Friday between 8:30 a.m. and 6:00 p.m. as well as overtime that may be required to satisfy client demands.
Ability to organize and prioritize numerous tasks and complete them under time constraints.
Ability to proofread typed material for contextual, grammatical, formatting, typographical or spelling errors.
Excellent interpersonal skills necessary to communicate and carry out the instructions given by a diverse group of clients, attorneys and staff; and provide information with ordinary courtesy and tact.

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