Patent Paralegal III

Finnegan•Dallas, TX

About The Position

The Patent Paralegal III applies comprehensive knowledge of U.S. and international patent law and firm procedures to prepare patent 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 paralegal works with attorneys, clients, foreign counsel, and firm staff, maintains accurate files and database records, and keeps current with patent-office rules and practices. The position includes preparing and filing U.S., national-stage, and PCT applications and other required responses; coordinating formalities with domestic and foreign patent offices; reviewing docket deadlines and patent-office papers; and preparing client reports and correspondence. The role also involves billing and invoice review, research, training, adoption of new processes and technology, and may include providing guidance to other paralegals and staff as needed.

Requirements

Bachelor’s degree and at least 8 years of patent prosecution experience in a professional services environment; alternatively, at least 9 years of patent prosecution experience in a law firm environment in lieu of a degree.
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 patent-office responses as required.
Knowledge of Microsoft Office Suite, including meeting platforms such as Teams and Zoom, and ability to learn firm and IP operations systems and databases.
Solid 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 interact 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 seek client instructions when appropriate.
Provide attorneys with information and materials to support their responsibilities.
Determine, distribute, and ensure compliance with client-specific procedures.
Review USPTO and foreign patent-office papers for accuracy and timeliness.
Prepare filing formalities, including application papers, responses to Missing Parts, 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 required by attorneys.
Draft correspondence to clients, foreign counsel, and others, and respond to client and attorney or staff inquiries in a timely manner.
Coordinate the integration of transferred-in cases into the firm system, including communication with Records and Docket Departments.
Maintain complete and orderly files and accurate database tracking information; generate reports as needed.
Remain current on USPTO rules and regulations and international patent practice.
Open new matters, including utility, continuation, divisional, and continuation-in-part matters.
Process invoices and review draft client bills for accuracy of time and disbursement entries; suggest edits to billing attorneys and attend to invoice payments.
Record billable and nonbillable time in accordance with firm and client standards.
Download and appropriately save art cited by patent-office examiners.
Forward substantive matters, such as Office Actions, to the working or review attorney.
Prepare and instruct foreign counsel on national-stage applications and coordinate filing formalities, including assignments, powers of attorney, and priority documents.
Contact examiners or patent offices to clarify issues or address communications sent in error.
Prepare monthly client reports.
Conduct factual research on clients, competitors, and other topics as directed.
Attend and participate in patent prosecution and technology trainings; complete assigned core training, cross-training, and skills assessments.
Adopt new processes and technology to meet evolving client demands.
Provide guidance and act as a resource to Patent Paralegals and other staff as needed.
Assume progressively greater responsibilities as experience is gained and perform other duties as assigned.