Patent Paralegal III

Finnegan•Reston, VA

10d•$85,000 - $100,000

About The Position

The Patent Paralegal III applies comprehensive knowledge of U.S. and international patent law and firm procedures to prepare filings, manage deadlines, and draft related correspondence. The role also monitors filing deadlines, records time, edits client bills, and processes invoices according to client standards and firm procedures. The position coordinates U.S. and international patent prosecution activities with clients, attorneys, foreign counsel, and firm support teams. It prepares and files patent applications and related documents, maintains docket and database information, supports attorneys with prosecution matters, and ensures files and client reporting are complete and accurate. The paralegal also keeps current with patent-office rules and practices, participates in training, adopts new processes and technology, and may guide other paralegals and staff as needed. This role requires a bachelor’s degree and at least eight years of patent prosecution experience in a professional services environment, or at least nine years of patent prosecution experience in a law firm environment in lieu of a degree. The position requires strong electronic filing, research, database, communication, organization, customer service, and deadline-management skills. Overtime may be required when necessary. The base annual pay range is $85,000–$100,000, with the offered amount dependent on skills, qualifications, experience, location, and internal equity. A full range of medical, financial, and/or other benefits dependent on the position will also be offered.

Requirements

Bachelor’s degree and at least 8 years of patent prosecution experience in a professional services environment, or at least 9 years of patent prosecution experience in a law firm environment in lieu of a degree.
Comprehensive knowledge and understanding of international and U.S. patent-law rules, procedures, and requirements.
Ability to navigate the USPTO website or international patent-office websites and knowledge of patent and trademark information search tools.
Experience elevating issues to appropriate representatives when clarification is needed.
Strong experience with electronic filing procedures at the USPTO and/or international patent offices.
Ability to prepare and file new U.S. and national-stage applications, PCT applications, and other required responses in the PTO.
Knowledge of Microsoft Office Suite, including meeting platforms such as Teams and Zoom, and ability to learn IP operations and firm systems and databases.
Experience with case or matter management and other database tools and technologies used to manage information.
Expert research skills and proficiency with research tools, including the Internet and government websites.
Strong customer service, writing, and verbal communication skills.
Ability to work independently while also taking direction from others.
Ability to work under pressure, meet frequent deadlines, and prioritize multiple tasks.
Ability to deal courteously and efficiently with attorneys, clients, administrative and support staff, outside vendors, and professional peers.
Ability and willingness to work overtime when necessary.
Willingness to contribute as a team player on department projects.

Responsibilities

Coordinate U.S. and international patent application filing procedures with client teams.
Review dockets to ensure deadlines are met and obtain client instructions when appropriate.
Provide attorneys with information and materials needed to meet their responsibilities.
Determine, distribute, and ensure compliance with client-specific procedures.
Review USPTO and foreign patent-office papers for accuracy and timeliness.
Prepare patent filing formalities, including application papers, Missing Parts responses, Information Disclosure Statements, oaths and declarations, filing-receipt corrections, publication requests, assignment recordations, issue-fee payments, and certificates of correction.
Prepare and file new U.S. and national-stage applications, PCT applications, and other responses required by attorneys.
Draft correspondence to clients, foreign counsel, and others.
Respond promptly to client and attorney or staff inquiries.
Coordinate integration of transferred-in cases into the firm system, including communication with Records and Docket Departments.
Communicate professionally with clients, professional staff, and support staff.
Maintain complete and orderly files.
Remain current on USPTO rules and regulations and international practices.
Open new matters, including utility, continuation, divisional, and continuation-in-part matters.
Process invoices and attend to invoice payments.
Download patent-office examiner-cited art and save it appropriately.
Record billable and non-billable time according to firm and client standards and best practices.
Forward substantive matters, such as Office Actions, to the working or review attorney.
Prepare instructions for foreign counsel for national-stage applications and coordinate filing formalities, including assignments, powers of attorney, and priority documents.
Contact examiners or patent offices when clarification is needed or communications appear to have been sent in error.
Prepare monthly client reports.
Maintain accurate client- or attorney-directed database tracking information and generate reports as needed.
Review draft client bills for accurate time and disbursement entries and suggest edits to the billing attorney.
Perform factual research on clients, competitors, and other topics as directed.
Attend and participate in patent prosecution and other technological training as assigned.
Complete core training, cross-training, skills assessments, and related development as assigned.
Adopt new processes and technology as client demands evolve.
Provide guidance and serve as a resource to Patent Paralegals and other staff as needed.
Assume progressively greater responsibilities as experience is gained.
Perform other duties as assigned.