Senior Patent Paralegal

Finnegan•Washington, DC

2d•Hybrid

About The Position

The Senior Patent Paralegal demonstrates comprehensive knowledge of U.S. and international patent law and firm procedures. The role prepares patent filings, manages deadlines, drafts correspondence, monitors docket deadlines, records time, edits client bills, and processes invoices in accordance with client standards and firm procedures. The paralegal works independently on patent prosecution matters, proactively identifies issues and potential solutions for attorneys, and serves as a resource for client teams and other staff. The role may be based in any of Finnegan’s U.S. offices and requires a hybrid/onsite work schedule. Two shift options are available: 9:00 a.m.–5:30 p.m. or 11:00 a.m.–7:30 p.m. Candidates applying for the later shift may be eligible for additional scheduling flexibility based on business needs and manager approval. The base annual pay range is $105,000–$120,000; the offered amount depends on skills, qualifications, experience, location, and internal equity. 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 ten years of patent prosecution experience in a professional services environment, or, in lieu of a degree, at least ten years of patent prosecution experience in a law firm environment.
Must have been at the firm for at least two years, subject to change for a laterally hired Senior Patent Paralegal with significant experience exceeding ten years.
Expert knowledge and solid understanding of international and USPTO patent law rules, procedures, and requirements.
Ability to navigate USPTO and/or international patent office websites, knowledge of patent and trademark information search tools, and experience escalating issues to appropriate representatives for clarification.
Strong experience with electronic filing procedures at the USPTO or international patent offices.
Ability to prepare and file new U.S. and national stage applications, new 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 IP operations and firm systems and databases.
Solid 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.
Superior interpersonal, oral, and written communication skills.
Superior organizational skills and ability to exercise independent judgment, prioritize assignments, manage multiple projects and a diverse workload, and meet deadlines in a fast-paced environment.
Professionalism and ability to work independently and as part of a team.

Responsibilities

Coordinate U.S. and international patent application filing procedures with attorneys, working independently and seeking attorney input when needed for special situations or issues.
Proactively review dockets to ensure deadlines are met and seek client instructions as necessary.
Provide attorneys with information and materials needed to meet their responsibilities, proactively identifying and communicating issues and potential options for addressing them.
Determine, distribute, and ensure compliance with client-specific procedures; serve as a resource for client teams and maintain close client relationships.
Review USPTO and foreign patent office reports and papers for accuracy in a timely manner.
Prepare formalities for USPTO filings, 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.
Draft correspondence to clients, foreign counsel, and others, and respond promptly to client and attorney or staff inquiries.
Coordinate the integration of transferred-in cases into the firm system, including communication with Records and Docket Departments.
Communicate professionally with clients, professionals, and support staff, and maintain complete, orderly files.
Remain current on USPTO rules and regulations and international practice.
Open new matters, including new utility, continuation, divisional, and continuation-in-part matters.
Process invoices and adhere to firm and client best practices for recording billable and non-billable time.
Download art cited by patent office examiners and save it appropriately.
Forward substantive matters, such as Office Actions, to the working or reviewing attorney.
Prepare and instruct foreign counsel on national stage applications, coordinate associated formalities, and work with foreign counsel to resolve issues and recommend solutions to attorneys.
Be specifically identified on the docket for matters assigned to Patent Paralegals.
Contact examiners or patent offices when clarification is needed or communications are sent in error.
Prepare and file new U.S. and national stage applications, new PCT applications, and other USPTO responses as required by attorneys.
Prepare monthly client reports without prompting by attorneys or clients.
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, suggest edits to billing attorneys, and attend to invoice payment.
Conduct factual research on clients, competitors, and other topics as directed.
Attend and participate in patent prosecution and technology training; teach or develop training materials when appropriate.
Complete assigned core training, cross-training, skills assessments, and development, and seek additional professional development opportunities.
Adopt new processes and technology as client demands evolve and serve as a resource to others.
Mentor, train, guide, and support other Patent Paralegals and staff as needed.
Assume progressively greater responsibilities as experience is gained and perform other duties as assigned.