Patent Paralegal II

Finnegan•Dallas, TX

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 supports U.S. and international patent prosecution, maintains related databases and financial records, and provides guidance and training to Patent Paralegal I staff and others as needed. The position is available at all U.S. office locations.

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 search tools for patent and trademark information.
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 IP Operations and firm systems and databases.
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 fee submissions.
Review files and prepare Information Disclosure Statements for U.S. and international patent applications.
Prepare shell amendments for attorneys to use when preparing proposed responses to outstanding office actions.
Enter and maintain database information.
Calculate Patent Term Adjustments.
Prepare and load USPTO forms for electronic filing, designating document types and formats and fee types, and ensuring fees are credited and paid.
Create and maintain Notice of Allowance checklists.
Submit Certificates of Corrections and Priority Document requests.
Research and locate files as 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 to Patent Paralegal I staff and other staff as needed.
Complete core training, cross-training, skills assessments, and assigned development activities.
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 and demonstrate readiness to assume progressive responsibilities as experience is gained.
Perform other duties as assigned.