Patent Paralegal III

Finnegan•Washington, DC

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 in accordance with client standards and firm procedures. The position works with attorneys, clients, foreign counsel, and professional and support staff, maintains complete case files and database information, and helps adapt to evolving client needs and technology. The paralegal may guide other paralegals and staff and assumes greater responsibility as experience is gained.

Requirements

Bachelor’s degree and at least 8 years of patent prosecution experience in a professional services environment; or, in lieu of a degree, at least 9 years of patent prosecution experience in a law firm environment.
Comprehensive knowledge of international and U.S. patent law rules, procedures, and requirements.
Ability to navigate the USPTO website and international patent office websites, use patent and trademark search tools, and elevate 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 USPTO responses as required.
Knowledge of Microsoft Office Suite, including meeting platforms such as Teams and Zoom, and ability to learn the systems and databases used by the IP operations department and firm.
Experience with case or matter management and other database tools and technologies used to manage data and 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, monitor deadlines, and seek client instructions when appropriate.
Provide attorneys with information and materials needed to fulfill 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 USPTO responses as directed by attorneys.
Draft correspondence to clients, foreign counsel, and others, and respond promptly to client and attorney or staff inquiries.
Coordinate integration of transferred-in cases with Records and Docket Departments.
Communicate professionally with clients, attorneys, professional staff, support staff, vendors, and peers.
Maintain complete, orderly files and accurate database tracking information; generate reports as needed.
Keep current with USPTO rules and regulations and international patent practice.
Open new matters, including utility, continuation, divisional, and continuation-in-part matters.
Process invoices, review draft client bills for accurate time and disbursement entries, suggest edits to billing attorneys, and attend to invoice payment.
Download and appropriately save art cited by patent office examiners.
Record billable and non-billable time in accordance with firm and client standards.
Forward substantive matters, such as Office Actions, to the working or reviewing attorney.
Prepare and instruct foreign counsel on national stage applications and coordinate filing formalities such as 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.
Conduct factual research on clients, competitors, and other topics as directed.
Attend patent prosecution and other technology trainings; complete assigned core training, cross-training, skills assessments, and related development.
Adopt new processes and technology as client needs evolve.
Provide guidance and serve as a resource to Patent Paralegals and other staff as needed.
Take on progressive responsibilities as experience is gained and perform other duties as assigned.