Patent Paralegal II

Finnegan•Boston, MA

10d•$70,000 - $95,000

About The Position

The Patent Paralegal II assists the IP Operations team with administrative tasks, including preparing filings, managing deadlines, and drafting correspondence related to patent application filings. The role involves supporting U.S. and international patent prosecution, maintaining databases, processing financial documents, and providing guidance to Patent Paralegal Is and other staff. The paralegal is expected to stay current in patent prosecution, adapt to new processes and technology, and pursue professional development while taking on progressive responsibilities.

Requirements

Bachelor’s degree and at least three years of patent prosecution experience in a professional services or law firm environment; or, in lieu of a degree, at least five years of patent prosecution experience in a law firm environment.
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 designating 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.
Accurately and promptly reconcile and process invoices and other financial documents according to firm procedures.
Mentor, train, guide, and serve as a resource for Patent Paralegal Is and other staff as needed.
Complete assigned core training, cross-training, skills assessments, and related development.
Use appropriate resources to stay current and maintain proficiency in patent prosecution practice areas.
Adopt new processes and incorporate new technology as client demands evolve.
Complete and seek professional development training and experience, and demonstrate readiness to assume progressively greater responsibilities.
Perform other duties as assigned.