Patent Paralegal III

Finnegan•Reston, VA

About The Position

The Patent Paralegal III applies comprehensive knowledge of U.S. and international patent law and firm procedures to prepare 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 paralegal coordinates with attorneys, clients, foreign counsel, and support teams; maintains case files and databases; and helps ensure accurate and timely patent prosecution work. The position may provide guidance to other paralegals and staff, assumes progressive responsibilities as experience grows, and performs other duties as assigned.

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 without 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 escalate issues for clarification.
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 department 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 with research tools, including the Internet and government websites.
Strong customer service, written communication, 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 participate as a team player on department projects.

Responsibilities

Coordinate U.S. and international patent application filing procedures with client teams.
Review docket deadlines, ensure they are met, and seek client instructions when appropriate.
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, such as office actions, 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 the integration of transferred-in cases into the firm system with Records and Docket Departments.
Communicate professionally with clients, professional staff, and support staff; maintain complete, orderly files.
Stay current on USPTO rules and regulations and international practice.
Open new matters, including utility, continuation, divisional, and continuation-in-part matters.
Process invoices and attend to invoice payments.
Download cited art from 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, 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 and participate in patent prosecution and other technological training; complete core training, cross-training, skills assessments, and related development as assigned.
Adopt new processes and technology as client needs evolve.
Provide guidance and serve as a resource to Patent Paralegals and other staff as needed.
Assume progressive responsibilities within assigned work as experience is gained.