Patent Paralegal III

Finnegan•Boston, MA

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 paralegal coordinates with clients, attorneys, foreign counsel, and firm departments, maintains files and case-tracking data, and supports accurate and timely patent prosecution work. The position requires substantial patent prosecution experience, strong electronic filing and research skills, and the ability to manage multiple tasks and frequent deadlines. The paralegal may guide other staff, assumes increasing responsibility as experience is gained, and participates in assigned training and development. The role may also require overtime when necessary.

Requirements

Bachelor’s degree and at least 8 years of patent prosecution experience in a professional services environment; or, in lieu of a degree, at least 9 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 and/or international patent office websites, use patent and trademark information 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 USPTO responses as required.
Knowledge of Microsoft Office Suite, including meeting platforms such as Teams and Zoom, and ability to learn the systems and databases used by the IP operations department and the firm.
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 contribute as a team player on department projects.

Responsibilities

Coordinate U.S. and international patent application filing procedures with client teams.
Review docketed matters to ensure deadlines 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 for accuracy and timeliness.
Prepare formalities for USPTO and international patent office filings, 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 in a timely manner.
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.
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 payments.
Download patent-office-cited art 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 for national stage applications and coordinate filing formalities, such as assignments, powers of attorney, and priority documents.
Contact examiners or patent offices to obtain clarification or address communications sent in error.
Prepare monthly client reports and maintain accurate database tracking information as directed by clients or attorneys; generate reports as needed.
Review draft client bills for accurate time and disbursement entries and suggest edits to the billing attorney.
Perform factual research on clients, competitors, and other topics as directed.
Attend and participate in patent prosecution and technology trainings as assigned.
Complete core training, cross-training, skills assessments, and related development as assigned.
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 progressive responsibilities within assigned work as experience is gained.
Perform other duties as assigned.