Patent Paralegal III

Finnegan•Boston, MA

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 patent filings, manage deadlines, and draft related correspondence. The position also monitors filing deadlines, enters time, edits client bills, and processes invoices according to client standards and firm procedures. The role may provide guidance and serve as a resource to other Patent Paralegals and staff, with responsibilities increasing as experience is gained.

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 in lieu of a degree.
Comprehensive knowledge 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 for 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 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 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 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 to ensure deadlines are met and seek client instructions as 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, including 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; 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, professionals, and support staff, and maintain complete, orderly files.
Stay current on USPTO rules and regulations and international practice.
Open new matters, including utility, continuation, divisional, and CIP matters.
Process invoices and attend to invoice payment.
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 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 accurate 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 assigned core training, cross-training, skills assessments, and development activities.
Adopt new processes and technology as client demands evolve.
Provide guidance and act as a resource to Patent Paralegals and other staff as needed.
Perform other duties as assigned.