Patent Paralegal III

Finnegan•Atlanta, GA

10d•$85,000 - $100,000

About The Position

The Patent Paralegal III demonstrates 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, enters time, edits client bills, and processes invoices in accordance with client standards and firm procedures. The position coordinates U.S. and international patent application filings, maintains docket and matter records, prepares and files patent applications and related documents, and communicates with clients, attorneys, foreign counsel, and internal teams. It also supports accurate billing, client reporting, patent-office research, and ongoing training and development. The role may provide guidance to other Patent Paralegals and staff and assumes increasing responsibilities as experience is gained.

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 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 IP operations and firm systems and databases.
Solid experience with case or matter management systems and other database tools and technologies used to manage information.
Expert research skills and proficiency using 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 work 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 fulfill their responsibilities.
Determine, distribute, and ensure compliance with client-specific procedures.
Review USPTO and foreign patent office papers for accuracy and timeliness.
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 to client and attorney/staff inquiries promptly.
Coordinate integration of transferred-in cases into the firm system, including communication with Records and Docket Departments.
Maintain professional communication with clients, professional staff, and support staff, and keep complete, orderly files.
Stay current on USPTO rules and regulations and international patent practices.
Open new matters, including utility, continuation, divisional, and continuation-in-part matters.
Process invoices and attend to their payment.
Download and appropriately save art cited by patent office examiners.
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 and instruct 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 billing attorneys.
Conduct factual research on clients, competitors, and other topics as directed.
Attend patent prosecution and other technology training and complete assigned core training, cross-training, skills assessments, and development activities.
Adopt new processes and technology as client needs evolve.
Provide guidance and serve as a resource to Patent Paralegals and other staff as needed.
Take on progressive responsibilities as experience is gained and perform other duties as assigned.