Paralegal - Intellectual Property

Ice Miller LLP•New York, NY

5h•$75,000 - $120,000

About The Position

Ice Miller LLP is seeking a Paralegal to support attorneys and agents in our Intellectual Property group. This person must be capable of working in a fast-paced environment with time-sensitive materials and maintain strict confidentiality due to the nature of the position. Salary in the range of $75,000 - $120,000 dependent on location and experience level

Requirements

High School diploma required
Minimum of 3 years of patent administration or paralegal experience, preferably in a law firm
Intermediate to advanced experience with Microsoft Office Suite required
Excellent time management skills and ability to work in high pressure environments; ability to shift priorities quickly without compromising deadlines or quality
Ability to be proactive and to identify and address problems quickly
Excellent clerical skills and knowledge of grammar, spelling and punctuation
Exceptional attention to detail and ability to work independently
Experience and familiarity with Adobe Acrobat Pro and DocuSign
Ability to perform all essential duties

Nice To Haves

Additional knowledge of trademark prosecution and/or IP litigation experience is a plus
Familiarity with CPi docketing software a plus

Responsibilities

Assisting with preparation, filing, prosecution and maintenance of all patent applications and patents (US, PCT, and foreign)
Knowledgeable of electronic filings via Patent Center, EFS-Web, EPAS, with the USPTO and ePCT with the IB
Manage worldwide client patent portfolios; coordinates domestic and international filings with the USPTO and foreign law offices and/or other foreign entities
Prepares and files various documents with the USPTO or foreign counsel
Adept at researching the MPEP for solutions to procedural questions
Must be highly knowledgeable of US, PCT, and foreign patent procedure and formality requirements; must have ability to prepare corrective patent documents and handle formalities responses (e.g. updating applicant, correcting filing receipts, responding to Missing Parts and Corrected Papers) with minimal attorney oversight
Preparing Information Disclosure Statements (IDS); ability to analyze families and related cases to prepare Supplemental IDSs when needed
Prepare and file documentation with USPTO and WIPO, including assignment agreements, change of name filings, and security interests
Prepares and records assignments
Prepares correspondence to clients
Reviews and takes action on correspondence received from foreign associates.
Obtains legalizations and certifications
Preparing foreign filing cost estimates
Paying maintenance fees and other renewal/annuity costs
Prepares status summary reports for attorneys and clients
Research and compile information pertaining to national and international patent rights including searches of USPTO records, industry databases and general legal research
Proactively manage patent prosecution dockets; monitor and follow-up on dates associated with the US and foreign patent prosecution docket, including clearing dates and providing follow-up with attorneys, clients, and foreign associates in order to provide adequate time to respond