Patent Paralegal III

Finnegan•Washington, DC

4d•$85,000 - $100,000

About The Position

Finnegan is more than just a law firm – we are a powerhouse of innovation and strategy growth. We pride ourselves on providing top-tier intellectual property services globally. Our success is rooted in our emphasis on relationships with our clients and each other. We care about every individual, and it is why many professionals have spent their entire careers at Finnegan.Role Overview The Patent Paralegal III will demonstrate comprehensive knowledge and understanding of U.S. and international patent law and firm procedures to prepare filings, manage deadlines and draft related correspondence. This position will also be responsible for monitoring filing deadlines, time entry, editing client bills and processing invoices in accordance to client standards and firm procedures.

Requirements

Bachelor’s degree and minimum of 8 years of patent prosecution experience in a professional services environment; OR, in lieu of a degree, a minimum of 9 years of patent prosecution experience in a law firm environment required.
Demonstrated comprehensive knowledge and understanding of international and patent law rules, procedures and requirements.
Ability to navigate USPTO website (or various international patent offices’ websites) and knowledge of search tools for patent and trademark information and experience elevating issues to appropriate representatives if clarifications are needed.
Strong experience with electronic filing procedures with USPTO and/or international patent office filing procedures.
Ability to prepare and file new U.S. and national stage applications, PCT applications, and other responses in the PTO as required.
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.
Solid experience with case/matter management and/or other database tools and technologies used to manage data and information.
Expert research skills and proficiency in using various research tools, including the Internet and government websites.
Strong customer service skills, including writing and verbal communication skills.
Ability to be a self-starter, while also comfortable 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, and outside vendors and professional peers.
Ability and willingness to work overtime when necessary.
Willingness to be a team player on all department projects.

Responsibilities

Coordinates U.S. and international patent application filings procedures with client teams.
Reviews the docket to ensure that all deadlines are met appropriately, seeks instructions from client (as appropriate). Provides attorneys with information and/or materials to enable them to meet their responsibilities.
Determines, distributes, and ensures compliance with client-specific procedures.
Reviews for accuracy USPTO (U.S. Patent and Trademark Office) and foreign patent office papers in a timely manner (e.g., office actions) [This may be client specific; meaning, working attorney and secretary may file responses to office actions and report the same to client].
Prepares formalities associated with USPTO (and/or international patent offices) filings, including application papers, responses to Missing Parts, Information Disclosure Statements, Oaths/Declarations, correction of filing receipts, publication requests, assignment recordation, issue fee payment, certificate of correction; prepares and files new U.S. and national stage applications.
Drafts correspondence to client, foreign counsel, and others.
Responds to client and attorney/staff inquiries in a timely manner.
Coordinates the integration of transferred-in cases into firm system, including communicating with Records and Docket Departments.
Communicates with client, professional and support staff in a professional manner.
Maintains complete files in good order.
Remains current in knowledge of USPTO rules and regulations and/or international practice.
Opens new matters/new utility/new continuation/divisional/CIP matters.
Processes invoices.
Downloads any art cited by patent office examiner and saves appropriately.
Adheres to best practices for time entry when recording billable and non billable time in accordance with firm and client standards.
Forwards substantive matters to working/review attorney (e.g., Office Actions).
Prepares and instructs foreign counsel for national stage applications; coordinates with foreign counsels to attend to any formalities associated with the filings (e.g. assignments, powers of attorney, priority documents, etc.).
Calls examiner or respective patent office if clarifications are needed or if respective patent office sends communications in error.
Prepares and files PCT applications.
Prepares and files other responses in the USPTO as required by attorney.
Prepares monthly client reports.
Maintains complete and accurate database tracking information as directed by client and/or attorneys; generates reports as needed.
Reviews draft client bills to ensure accuracy of time and disbursement entries, suggests edits to billing attorney; attends to payment of invoices.
Performs factual research on client, competitors and other topics as directed.
Attends and participates in patent prosecution and other technological trainings as assigned.
Completes core training/cross-training, skills assessments and related development as assigned.
Embraces new processes and incorporates new technology to meet client demands as they evolve.
May provide guidance, and act as a resource to Patent Paralegals and other staff as needed.
Assumes progressive responsibilities within assigned work as experience is gained in the position.
Other duties as assigned.