Patent Paralegal II

Finnegan•Boston, MA

About The Position

The Patent Paralegal II assists the IP Operations team with administrative tasks, including preparing filings, managing deadlines, and drafting correspondence related to filing patent applications. The role supports patent prosecution work for U.S. and international applications and involves working with attorneys, staff, and other paralegals. The Patent Paralegal II also mentors and trains Patent Paralegal I staff and other staff as needed, keeps current with patent prosecution practices, and develops the ability to take on progressively greater responsibilities.

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 in lieu of 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 assigned work.
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 the 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 simultaneously, 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 fees.
Review files and prepare Information Disclosure Statements for U.S. and international patent applications.
Prepare shell amendments for attorneys to use in preparing proposed responses to outstanding office actions.
Perform database input and maintenance.
Calculate Patent Term Adjustments.
Prepare and load USPTO forms for electronic filing, including designating document types and formats, 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 as requested by staff and attorneys.
Accurately and promptly reconcile and process invoices and other financial documents 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 assignments.
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 as experience is gained.
Perform other duties as assigned.