Patent Paralegal III

Finnegan•Palo Alto, CA

18d

About The Position

The Patent Paralegal III prepares and files U.S. and international patent applications and related documents, manages filing deadlines, and drafts correspondence. The role requires comprehensive knowledge of patent law, procedures, and firm and client requirements. It also supports attorneys by providing relevant information and materials, responding to inquiries, maintaining case files and database records, and coordinating with clients, foreign counsel, and internal teams. The position includes reviewing and processing client bills and invoices, recording time, preparing reports, and conducting factual research. The Patent Paralegal III also participates in training and professional development, adopts new processes and technology, and may guide other paralegals and staff. Responsibilities may expand as experience is gained.

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 of international and U.S. patent law rules, procedures, and requirements.
Ability to navigate the USPTO and international patent office websites, use patent and trademark search tools, and escalate issues when clarification is needed.
Strong experience with electronic filing procedures for 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 Teams and Zoom, and ability to learn the IP operations department’s and firm’s 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 member 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 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 promptly to client and attorney or staff inquiries.
Coordinate transferred-in cases with Records and Docket Departments.
Communicate professionally with clients, professional staff, and support staff; maintain complete and orderly files.
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 and attend to invoice payments.
Download and appropriately save art cited by patent office examiners.
Record billable and nonbillable time in accordance with firm and client standards.
Forward substantive matters, such as office actions, to the working or reviewing 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 and maintain accurate database tracking information; generate reports as needed.
Review draft client bills for accuracy of time and disbursement entries and suggest edits to the billing attorney.
Conduct factual research on clients, competitors, and other topics as directed.
Attend patent prosecution and technology trainings and complete assigned core training, cross-training, skills assessments, and development activities.
Adopt new processes and technology to meet changing 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.