Patent Paralegal III

Finnegan•Atlanta, GA

17d

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 in accordance with client standards and firm procedures. The position works with attorneys, clients, foreign counsel, and firm departments to coordinate patent prosecution matters and maintain accurate records.

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 website and international patent office websites, use patent and trademark search tools, and elevate issues for clarification when 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 firm and IP operations systems and databases.
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.
Willingness and ability 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 docket deadlines, seek client instructions as appropriate, and provide attorneys with information and materials needed to meet their responsibilities.
Determine, distribute, and ensure compliance with client-specific procedures.
Review USPTO and foreign patent office papers for accuracy and timeliness, including office actions.
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; respond promptly to client and attorney or staff inquiries.
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, and maintain complete, orderly files.
Keep current on USPTO rules and regulations and international practice.
Open new matters, including utility, continuation, divisional, and CIP 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.
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 on national stage applications and coordinate filing formalities, such as assignments, powers of attorney, and priority documents.
Contact examiners or patent offices for clarification or to address communications sent in error.
Prepare monthly client reports and maintain accurate database tracking information; generate reports as needed.
Conduct factual research on clients, competitors, and other topics as directed.
Attend patent prosecution and other technological training, and complete assigned core training, cross-training, skills assessments, and development activities.
Adopt new processes and technology to meet evolving client demands.
Provide guidance and serve 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.