Patent Paralegal II

Finnegan•Washington, DC

About The Position

The Patent Paralegal II supports the IP Operations team by handling administrative work related to patent filings, deadline management, and correspondence. The role involves preparing and processing U.S. and international patent prosecution materials, maintaining databases and checklists, researching files, and processing financial documents. The paralegal also mentors and trains Patent Paralegal I staff and other colleagues as needed, completes assigned training and development, and keeps current with patent prosecution practices and evolving technologies. 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 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 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 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.
Perform database input and maintenance.
Calculate Patent Term Adjustments.
Prepare and load USPTO forms for electronic filing, including selecting document types and formats, selecting 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 promptly 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 related development as assigned.
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 take on progressive responsibilities as experience is gained.
Perform other duties as assigned.