Patent Paralegal II

Finnegan•Washington, DC
•$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 filing patent applications. The role supports patent prosecution operations, helps maintain records and databases, and provides guidance to Patent Paralegal Is and other staff. 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 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 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, manage multiple projects and 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 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 and fee types, and ensuring payment and fee credit.
  • 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.
  • 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 Is and other staff as needed.
  • Complete core training, cross-training, skills assessments, and related development as assigned.
  • Use appropriate resources to stay 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, and demonstrate readiness to take on progressive responsibilities as experience is gained.
  • Perform other duties as assigned.

Benefits

  • A full range of medical, financial, and/or other benefits, depending on the position.
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