Patent Paralegal

About the position

The position involves docketing and record keeping in the IP Management Database, preparation, proofreading, and management of patent forms and documents for filing with the United States Patent and Trademark Office (USPTO) or the International Bureau (IB) of the World Intellectual Property Organization (WIPO). The role requires filing patent forms and documents in compliance with applicable country law, either directly or in coordination with counsel/vendors, and coordination and scheduling of tasks between IP Engineers, Patent Attorneys, and Patent Agents, and the USPTO or IB.

Responsibilities

• Receive and docket documents from the USPTO, foreign patent offices, inventors, IP Engineers, and Outside Counsel into IP Management Database
• Generate workflow tasks for IP engineers, Patent Agents, and Patent Attorneys in compliance with the applicable rules for the specific document
• Receive all external notifications and communications from Outside Counsel, USPTO, WIPO and foreign patent offices and distribute to the correct members of the IP Team
• Maintain Power Integrations' IP Management Database (FoundationIP and DecipherIP) through updating records to reflect the current status of matters
• Interact with external patent resource vendors
• Generate reports on the status of Power Integrations' US and Foreign patent portfolio
• Manage USPTO deposit account
• Prepare and proofread patent forms and documents, including generating appropriate transmittals and office action response shells
• File documents electronically with the USPTO and the IB
• Assist with patent forms and documents across different jurisdictions to support foreign outside counsel
• Independently respond to incoming patent correspondence, when applicable
• Work with IP engineers, Patent Agents, and Patent Attorneys to keep abreast of all rules, regulations, and procedures for filing applications
• Research patent procedure and provide administrative assistance in the prosecution of patent applications
• Draft transmittal letters and IDS forms for review by in-house Patent Agents and Patent Attorneys
• Update IP Management Database (FoundationIP) in connection with Information Disclosure Statements (IDS)
• Manage proofreading of Publications and Issued Patents with external vendor

Requirements

• Excellent verbal and written communication skills in English
• Strong attention to detail with superior ability to identify errors in printed documents
• Strong familiarity with the patent process
• Experience with computer systems and databases
• Proficiency with Microsoft Word, Excel, Visio, and Adobe Acrobat
• Proficiency with docketing software (familiarity with FoundationIP preferred)
• Experience with Information Disclosure Statements, 37 CFR 1.97, and MPEP 609
• American Bar Association Approved Paralegal Certificate or Certified Paralegal
• At least 7 years of paralegal experience with a specific emphasis on patents
• At least 10 years of docketing experience with emphasis on US patent prosecution
• Ability to work independently to complete tasks under time constraints

Benefits

• Equity
• Medical benefits
• Employee Stock Purchase Plan (ESPP)
• 401K
• Tuition reimbursement
• Time off programs