Patent Paralegal III

Finnegan•Palo Alto, CA

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 applications and related documents, manage deadlines, and draft correspondence. The role also monitors filing deadlines, records time, edits client bills, processes invoices, and maintains accurate files and database information. The paralegal works with attorneys, clients, foreign counsel, and firm teams, and may guide other paralegals and staff as needed. 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 stated base annual pay range is $85,000–$100,000. A full range of medical, financial, and/or other benefits dependent on the position will also be offered.

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 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 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 PTO responses as required.
Knowledge of Microsoft Office Suite, including meeting platforms such as Teams and Zoom, and ability to learn the IP operations department’s and firm’s systems and databases.
Solid 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, 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 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 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, professional staff, and support staff.
Maintain complete, orderly files.
Stay current on 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 according to firm and client standards and best practices.
Forward substantive matters, such as office actions, to the working or reviewing 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 to seek clarification or address communications sent in error.
Prepare monthly client reports and maintain accurate database tracking information, generating reports as needed.
Review draft client bills for accurate time and disbursement entries and suggest edits to billing attorneys.
Conduct factual research on clients, competitors, and other topics as directed.
Attend patent prosecution and other technology trainings as assigned and complete 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.
Assume progressively greater responsibilities as experience is gained.
Perform other duties as assigned.