Remote Patent Paralegal - Contract

Chelsea Search Group•Atlanta, GA

5d•Remote

About The Position

Under the supervision of attorneys, the patent paralegal will provide support for all types of patent activities. The paralegal will operate as part of a team of attorneys and support staff to provide a high level of service to both internal and external clients.

Requirements

Minimum of five (5) years’ experience as a patent prosecution paralegal or comparable position with experience working in a law firm or in house legal environment
Minimum of five (5) years’ international prosecution experience
Knowledge of filing requirements for convention (non-PCT) applications
Extensive knowledge of U.S. or PCT patent rules and procedure; knowledge of national laws of other countries
Knowledge of various Courts systems and filing requirements
Four year degree, or equivalent work experience that demonstrates the ability to perform the duties of the role
High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, U.S. Patent Office Electronic Filing System, Dialog, and other internet research tools
Ability to travel if needed
Ability to compose routine correspondence
Excellent organizational skills and the ability to work independently, prioritize assignments and handle multiple projects simultaneously
Maintain confidentiality of client information
Should have ability to work in fast-paced environment

Responsibilities

Review and manage docket for U.S. and foreign deadlines, understand docket and deadlines and action needed on each file
Assist in patent filing strategy discussions and due diligence
Assist in filing of U.S. and PCT patent applications, both electronically and paper (including preparation and review of necessary filing documents)
File and assist in prosecution of design applications (including convention deadlines for filing abroad)
Assist in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding patent certificates
Draft detailed letter to client reporting Office Actions
Prepare response to Notice to File Missing Parts
Process payment of Issue Fees
Process post allowance reviews
Draft preliminary amendments with claim identifiers
Prepare office action responses
Effect national phase entry of PCT applications, and prepare and file continuing applications
Correspond with foreign associates, oversee payment of foreign associates' invoices, and preparation of reporting letters to client
Review files and prepare Information Disclosure Statement and accompanying documents
Track chain of title in U.S. patents and ability to perfect same
Effect portfolio transfers and manage multi-client portfolios