Senior Patent Paralegal

Finnegan•Atlanta, GA

3d•$105,000 - $120,000•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 applications and related documents, manage deadlines, and draft correspondence. The role monitors docket deadlines, records time, reviews client bills, and processes invoices in accordance with client standards and firm procedures. It serves as a resource and leader for client teams, supports attorneys and colleagues, and maintains effective relationships with clients and foreign counsel. The position offers two shift options: 9:00 a.m. to 5:30 p.m. or 11:00 a.m. to 7:30 p.m. Candidates for the later shift may be eligible for additional scheduling flexibility based on business needs and manager approval. The role can 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 offered amount dependent on skills, qualifications, experience, location, and internal equity. A range of medical, financial, and/or other benefits dependent on the position will also be offered.

Requirements

Bachelor’s degree and at least 10 years of patent prosecution experience in a professional services environment; or, in lieu of a degree, at least 10 years of patent prosecution experience in a law firm environment.
At least two years at the firm; this requirement may change for a lateral Senior PPA hire with significant experience exceeding 10 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 elevating issues to appropriate representatives when clarification is needed.
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 required PTO responses.
Knowledge of Microsoft Office Suite, including 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 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.
Review the docket proactively to ensure deadlines are met and seek client instructions as necessary.
Provide attorneys with information and materials needed to meet their responsibilities, proactively identifying issues and communicating potential options for addressing them.
Determine, distribute, and ensure compliance with client-specific procedures; serve as a leader and resource for client teams and maintain client relationships.
Review reports from the USPTO and foreign patent offices, including office actions, for accuracy and 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.
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, 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 CIP matters.
Process invoices and review draft client bills for accuracy of time and disbursement entries; suggest edits to billing attorneys and attend to invoice payment.
Download cited art from patent office examiners and save it appropriately.
Record billable and non-billable time in accordance with firm and client standards and best practices.
Forward substantive matters, such as office actions, to the working or review attorney.
Prepare and instruct foreign counsel on national stage applications, coordinate related filing formalities, and work with foreign counsel to address issues and develop solutions for attorney recommendation.
Be specifically identified on the docket for matters assigned to Patent Paralegals.
Contact examiners or patent offices when clarification is needed or communications appear to have been 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.
Conduct factual research on clients, competitors, and other topics as directed.
Attend and participate in patent prosecution and other technology training; may teach or develop training materials.
Complete core training, cross-training, skills assessments, and assigned 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 increasing responsibilities within assigned work as experience is gained.
Perform other duties as assigned.