Patent Paralegal II

Finnegan•Palo Alto, CA

About The Position

The Patent Paralegal II supports the IP Operations team with administrative work related to patent filings, deadline management, and correspondence. The role involves preparing and processing USPTO and international patent prosecution materials, maintaining databases and checklists, researching and locating files, and handling related financial documents. The position also provides guidance and training to Patent Paralegal I staff and other colleagues as needed. The paralegal is expected to stay current in patent prosecution, learn and adopt new processes and technology, complete professional development, and take on progressively greater responsibilities as experience is gained.

Requirements

Bachelor’s degree and at least three years of patent prosecution experience in a professional services or law firm environment; alternatively, at least five years of patent prosecution experience in a law firm environment without a degree.
Demonstrated knowledge and understanding of international and USPTO patent law rules, procedures, and requirements.
Ability to navigate the USPTO website and demonstrated knowledge of patent and trademark information search tools.
Experience with USPTO electronic filing procedures.
Knowledge of patent prosecution concepts and ability to apply them to assignments.
Knowledge of Microsoft Office Suite, including meeting platforms such as Teams and Zoom, and ability to learn the systems and databases used by the IP Operations department and firm.
Advanced research skills and proficiency with research tools, including the Internet and government websites.
Strong interpersonal, oral, and written communication skills.
Strong organizational skills and ability to exercise independent judgment, prioritize assignments, handle multiple projects, manage a diverse workload, and meet deadlines in a fast-paced environment.
Professionalism and ability to work independently and as part of a team.

Responsibilities

Prepare responses to USPTO notices and office actions, information disclosure statements, and issue and publication fee submissions.
Review files and prepare Information Disclosure Statements for U.S. and international patent applications.
Prepare shell amendments for attorneys to use in drafting proposed responses to outstanding office actions.
Enter and maintain database information.
Calculate Patent Term Adjustments.
Prepare and load USPTO forms for electronic filing, including selecting document types and formats, selecting fee types, and ensuring fees are credited and paid.
Create and maintain Notice of Allowance checklists.
Submit Certificates of Correction and Priority Document requests.
Research and locate files requested by staff and attorneys.
Reconcile and process invoices and other financial documents accurately and on time, in accordance with firm procedures.
Mentor, train, guide, and serve as a resource for Patent Paralegal I staff and other staff as needed.
Complete core training, cross-training, skills assessments, and related development as assigned.
Use appropriate resources to stay current and maintain proficiency in patent prosecution practice areas.
Adopt new processes and technology as client demands evolve.
Complete and seek professional development training and experience, and demonstrate readiness to assume progressive responsibilities.
Perform other duties as assigned.