International Filing Paralegal III

IP Attorneys•Boston, MA

11d•Onsite

About The Position

The IFD Paralegal (III) works as part of a team to provide firm-wide service in all aspects of the foreign patent filing process. The IFD Paralegal closely manages the deadlines associated with foreign patent prosecution for assigned clients and works collaboratively and effectively with attorneys, clients, and other staff. Additionally, the IFD Paralegal will coordinate with the department supervisors to aid with development and documentation of processes and procedures and assist with training of newer paralegals as needed. The IFD Paralegal also works with attorneys, team members and other staff on additional patent prosecution work such as due diligence, and other special projects. The IFD Paralegal operates with a high level of independence and is an active team member positively contributing to the department and firm. The billable goal for this position is 1200 hours and requires the ability to work additional hours to complete assigned responsibilities.

Requirements

Minimum of seven (7+) years of foreign patent prosecution experience in a law firm or corporate setting.
Highly proficient in MS Office as well as computer and database management skills.
Experience with CPi, IPDAS, and general time entry.
Exceptional oral and written communication skills and the ability to effectively communicate in a clear and concise manner.
Strong time management, prioritization, problem-solving, and organizational skills, and the ability to work effectively in a high-pressure environment.
Exceptional attention to accuracy and detail.
Able to dedicate additional efforts and increase work hours to successfully accomplish assigned projects/work.
Comprehensive knowledge of legal terminology, rules, regulations, and procedures specific to practice area.
Ability to adhere to established work schedule, but with flexibility required to respond to workload demands including overtime requests when needed.
Punctual and reliable and able to meet set deadlines.
Ability to maintain confidentiality of matters and other firm business information.

Nice To Haves

Bachelor’s degree preferred.

Responsibilities

Prepares and files Patent Cooperation Treaty (PCT) Applications in accordance with firm procedures.
Works with foreign associates to file foreign patent and design application in foreign jurisdictions.
Reviews and reports foreign patent related correspondence from foreign patent offices.
Prepares documents, reports, and correspondence for assigned clients.
Manages docket relating to foreign patent prosecution deadlines to ensure timely completion of required actions, including timely reminders and follow up for instructions.
Maintains the integrity of electronic data relating to clients’ foreign intellectual property in accordance with firm policy and procedure (including for client databases as appropriate).
Develops and maintains knowledge and understanding of patent office rules and procedures in foreign areas of patent prosecution.
Routinely assist with implementation of foreign patent rule changes, including drafting announcements, providing recommendations for practice and template changes, etc.
Assists department manager(s) with development of documentation of processes and procedures on a regular basis.
Routinely tests new software, databases and relevant systems related to the foreign filing work.
Participates regularly in pilot groups and/or product or new project deployments, including foreign patent databases and electronic resources.
Routinely assists with training of newer paralegals by serving as a resource on procedures, patent office rules and assisting with work product review and/or quality control checks.
Routinely assists with additional patent prosecution related projects.
Consistently meets/exceeds the department 1200 billable hour goal and consistently adheres to firm and department procedures.
Regularly works as part of the team to lead, collaborate, and implement larger scale projects.
Promotes a positive work environment.