Senior Patent Paralegal

Finnegan•Boston, MA

8d•Hybrid

About The Position

The Senior Patent Paralegal applies comprehensive knowledge of U.S. and international patent law and firm procedures to prepare and file patent documents, manage deadlines, draft correspondence, and support patent prosecution matters. The role also monitors filing deadlines, records time, edits client bills, and processes invoices in accordance with client standards and firm procedures. It offers two shift options: 9:00 a.m. to 5:30 p.m. or 11:00 a.m. to 7:30 p.m.; candidates on the later shift may be eligible for additional scheduling flexibility based on business needs and manager approval. The position may be based in any of Finnegan’s U.S. offices and requires a hybrid/onsite work schedule. The base annual pay range is $105,000–$120,000, with the actual offer dependent on skills, qualifications, experience, location, and internal equity. 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.
At least two years at the firm; this may change for a lateral Senior Patent Paralegal hire 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 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 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 to resolve special situations or issues.
Proactively review dockets, monitor deadlines, and seek client instructions as necessary.
Provide attorneys with information and materials needed to meet their responsibilities, proactively identifying issues and communicating potential options.
Determine, distribute, and ensure compliance with client-specific procedures; serve as a resource for client teams and maintain client relationships to address changes and issues.
Review USPTO and foreign patent office reports and papers for accuracy in a timely manner.
Prepare USPTO 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.
Draft correspondence to clients, foreign counsel, and others, and respond promptly to client and attorney or staff inquiries.
Coordinate integration of transferred-in cases into the firm system, including communication with Records and Docket Departments.
Communicate professionally with clients, professional staff, and support staff, and maintain complete, orderly files.
Stay current on USPTO rules and regulations and international patent practice.
Open new matters, including utility, continuation, divisional, and continuation-in-part matters.
Process invoices and download and appropriately save art cited by patent office examiners.
Record billable and non-billable time in accordance with firm and client standards.
Forward substantive matters, such as Office Actions, to the working or review attorney.
Prepare and instruct foreign counsel on national stage applications; coordinate filing formalities and work with foreign counsel to develop solutions to issues for attorney recommendation.
Be specifically identified on the docket for matters assigned to Patent Paralegals.
Contact examiners or patent offices to clarify issues or address communications 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 from 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 payments.
Conduct factual research on clients, competitors, and other topics as directed.
Attend and participate in patent prosecution and other technology trainings; develop or deliver training materials when appropriate.
Complete assigned core training, cross-training, skills assessments, and development activities, 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.