Patent Paralegal II

Finnegan•Dallas, TX

10d•$70,000 - $95,000

About The Position

The Patent Paralegal II assists the IP Operations team with administrative work, including preparing filings, managing deadlines, and drafting correspondence related to patent application filings. The role handles patent prosecution tasks for U.S. and international applications, supports electronic filing and fee processing, maintains records and checklists, and provides guidance to Patent Paralegal Is and other staff. The position also involves ongoing training, professional development, adapting to new processes and technology, and taking on progressive 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, or 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 appropriate assignments.
Knowledge of Microsoft Office Suite, including meeting platforms such as Teams and Zoom, and ability to learn IP Operations and firm systems and databases.
Advanced research skills and proficiency using 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.
Perform database input and maintenance.
Calculate Patent Term Adjustments.
Prepare and load USPTO forms for electronic filing, including selecting correct document types and formats and 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 to Patent Paralegal Is and other staff as needed.
Complete assigned core training, cross-training, skills assessments, and related development.
Use appropriate resources to remain current and proficient in patent prosecution practice areas.
Adopt new processes and technology to meet evolving client demands.
Complete and seek professional development training and experience, demonstrating readiness to assume progressive responsibilities.
Perform other duties as assigned.