Patent Paralegal III

Finnegan•Washington, DC

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 role also monitors filing deadlines, records time, reviews client bills, and processes invoices in accordance with client standards and firm procedures. The position coordinates U.S. and international patent prosecution activities with clients, attorneys, foreign counsel, and internal teams. It maintains accurate matter records and client-specific tracking information, supports attorneys with materials and deadline management, and handles a range of filing formalities and reporting tasks. The paralegal is expected to remain current on patent office rules and procedures, complete assigned training, adapt to new processes and technology, and may provide guidance to other paralegals and staff. The role 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 such experience in a law firm environment in lieu of a degree. The stated annual base pay range is $85,000–$100,000. A range of medical, financial, and/or other benefits dependent on the position will also be offered.

Requirements

Bachelor’s degree and a minimum of 8 years of patent prosecution experience in a professional services environment, or, in lieu of a degree, a minimum of 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 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 patent office 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.
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 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 to support 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, Missing Parts responses, 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 or staff inquiries in a timely manner.
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 and orderly files.
Stay current on USPTO rules and regulations and international patent practice.
Open new matters, including utility, continuation, divisional, and CIP matters.
Process invoices and attend to invoice payment.
Download and appropriately save art cited by patent office examiners.
Record billable and non-billable time according to firm and client standards.
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 such as 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.
Maintain accurate database tracking information as directed by clients or attorneys and generate reports as needed.
Review draft client bills for accuracy of time and disbursement entries and suggest edits to billing attorneys.
Perform factual research on clients, competitors, and other topics as directed.
Attend and participate in patent prosecution and other technological training 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 as experience is gained in the position.
Perform other duties as assigned.