Foreign Filing Paralegal

Proskauer•New York, NY

4d•Onsite

About The Position

The world’s leading organizations and global players choose Proskauer to represent them when they need it the most. With 800+ lawyers in key financial centers around the world, we are known for our pragmatic and business-savvy approach. Proskauer is the place to turn when a matter is complex, innovative, and game-changing. We work seamlessly across practices, industries and jurisdictions with asset managers, private equity and venture capital firms, Fortune 500 and FTSE companies, major sports leagues, entertainment industry legends and other industry-redefining companies. We are proud of our many achievements across a full spectrum of transactional and contentious practices. The IP Foreign Filing Paralegal will provide support to clients, attorneys, paralegals and secretaries in all aspects of patent foreign filing, U.S. National Stage, and U.S. Bypass Continuation Application Filings. They must remain current on all U.S., PCT and foreign patent rules and rule changes in national offices. The Foreign Filing Paralegal will report directly to the Manager of IP Prosecution Services.

Requirements

Bachelor’s Degree
A minimum of 3 years of foreign filing experience in a fast-paced law firm environment
Strong attention to detail and ability to manage multiple tasks simultaneously and meet deadlines with minimum supervision
Sound judgment and ability to respect, protect and maintain highly confidential and sensitive information
Ability to quickly and proactively identify problems and develop solutions
Work independently and escalate concerns when needed
Excellent interpersonal, organizational and communication skills, and ability to communicate effectively, both written and verbal
Must work well in team environment and maintain a positive team atmosphere
Strong technical skills in Microsoft Word, Excel, and patent docketing software

Nice To Haves

Experience with life sciences-based patent prosecution strongly preferred
Knowledge of Global IP Estimator a plus
ePCT and Foundation IP experience a plus
Experience working with PatDocs, Derwent, and TotalPatent One is a plus

Responsibilities

Prepare and submit patent filings in all foreign jurisdictions, including PCT, Paris Convention, and national phase filings.
Use ePCT to prepare electronic international application packages for filing with the U.S. Receiving Office or, when appropriate, filing directly with the International Bureau.
Prepare instructions to foreign associates outlining our clients’ instructions for both direct and national phase patent applications.
Review and maintain docket of associated deadlines for assigned clients, including but not limited to management and tracking of all aspects of foreign formalities associated with filing.
Coordinate with outside vendors to handle foreign formalities, e.g. translations, formal drawings, and apostille/legalization as necessary to comply with country law requirements.
Prepare draft estimates for various stages of foreign prosecution from direct or PCT filing to Regional Validations stage.
Manage large name change projects in multiple jurisdictions.
Review large patent schedules and confirm information against foreign patent office databases.
Serve as the primary contact for foreign associates from first filing to request for examination.
Timely report incoming foreign mail and as-filed documents to clients.
Coordinate the status of transferred applications and notify foreign associates of bulk changes to the assignee, docket numbers and attorney assignments.
Prepare and file disclosure documents in relevant copending applications and understand the rules of disclosure in foreign jurisdictions.
Keep current with changes in foreign country law.