Patent Paralegal III

Finnegan•Dallas, TX

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 and file patent documents, 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 work with clients, attorneys, foreign counsel, and firm departments. It maintains accurate case files and database records, prepares client reports, supports attorneys with materials and information, and keeps current with applicable patent office rules and practices. The role may provide guidance to other paralegals and staff, and assumes progressive responsibilities as experience is gained. The position 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 role may require overtime when necessary. The stated base annual pay range is $85,000–$100,000; the offered amount depends 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 a minimum of eight years of patent prosecution experience in a professional services environment, or, in lieu of a degree, a minimum of nine years of patent prosecution experience in a law firm environment.
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, 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 responses in the PTO as required.
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 using 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 seek client instructions as appropriate.
Provide attorneys with information and materials to help them meet their responsibilities.
Determine and distribute client-specific procedures and ensure compliance with them.
Review USPTO and foreign patent office papers, such as office actions, for accuracy and in a timely manner.
Prepare patent 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 promptly.
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.
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 art cited by patent office examiners and save it appropriately.
Record billable and non-billable time in accordance with firm and client standards.
Forward substantive matters, such as office actions, to the working or review attorney.
Prepare instructions for foreign counsel regarding national stage applications and coordinate filing formalities, including assignments, powers of attorney, and priority documents.
Contact examiners or patent offices to request clarification or address communications 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 billing attorneys.
Conduct factual research on clients, competitors, and other topics as directed.
Attend and participate in patent prosecution and technology training, and complete assigned core training, cross-training, skills assessments, and related development.
Adopt new processes and technology as client demands 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.