Patent Paralegal II

Finnegan•Atlanta, GA

About The Position

The Patent Paralegal II assists the IP Operations team with administrative work related to patent filings, deadline management, and correspondence. The role supports U.S. and international patent prosecution, including preparing documents for electronic filing, maintaining databases and checklists, researching files, and processing financial documents. The position also mentors and trains Patent Paralegal I staff and other colleagues as needed, completes assigned training and development, keeps current with patent prosecution practices, and adopts new processes and technology as client needs evolve. The role 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 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 IP Operations department’s and firm’s 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, 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 filings.
Review files and prepare Information Disclosure Statements for U.S. and international patent applications.
Prepare shell amendments for attorneys 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 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 I staff and other staff as needed.
Complete core training, cross-training, skills assessments, and other assigned 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, and demonstrate readiness to assume progressively greater responsibilities as experience is gained.
Perform other duties as assigned.