Patent Paralegal II

Finnegan•Reston, VA

About The Position

The Patent Paralegal II will assist the IP Operations team with administrative tasks, including preparation of filings, managing deadlines, and drafting related correspondence needed for filing patent applications.

Requirements

Bachelor’s degree and minimum of three years of patent prosecution experience in a professional services or law firm environment; OR in lieu of a degree, a minimum of five years of patent prosecution experience in a law firm environment required.
Demonstrated knowledge and understanding of international and USPTO (U.S. Patent and Trademark Office) patent law rules, procedures, and requirements.
Ability to navigate USPTO website and demonstrated knowledge of search tools for patent and trademark information.
Experience with Electronic Filing USPTO procedures.
Knowledge of patent prosecution concepts and ability to apply concepts to the appropriate assignments.
Knowledge of Microsoft Office Suite, including meeting platforms such as Teams and Zoom, and the ability to learn the systems and databases used by the IP operations department and the firm.
Advanced research skills and proficiency in using various research tools, including the Internet and government websites.
Strong interpersonal, oral, and written communication skills.
Strong organizational skills and the ability to exercise independent judgment, prioritize assignments, handle multiple projects simultaneously, manage a diverse workload, and meet deadlines in a fast-paced environment.
Must exhibit professionalism and have the ability to work independently and as part of a team.

Responsibilities

Prepares responses to USPTO notices and office actions, information disclosure statements, issue, and publication fees.
Reviews files and prepares Information Disclosure Statements for U.S. and international patent applications.
Prepares shell amendments for use by attorneys in preparation of proposed responses to outstanding office actions.
Performs database input and maintenance.
Calculates Patent Term Adjustments.
Prepares/loads USPTO forms for electronic filing to include designating correct document types and formats, fee types, and ensuring credit and payment of fees.
Creates and maintains Notice of Allowance checklists.
Submits Certificate of Corrections and Priority Document requests.
Researches and locates files as requested by staff and attorneys.
Accurately and timely reconciles and processes invoices and other financial documents in accordance with firm procedures.
Mentors, trains, provides guidance, and acts as a resource to Patent Paralegal Is, and other staff as needed.
Completes core training/cross-training, skills assessments and related development as assigned.
Utilizes appropriate resources to stay current and maintain proficiency in patent prosecution areas of practice.
Embraces new processes and incorporates new technology to meet client demands as they evolve.
Completes and actively seeks out professional development training/experience and demonstrates the ability to assume progressive responsibilities within assigned work as experience is gained in the position.
Other duties as assigned.