Senior Patent Paralegal

Finnegan•Washington, DC

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 correspondence, and support patent prosecution. The position also monitors docket deadlines, records time, reviews client bills, and processes invoices in accordance with client standards and firm procedures. The role may be based in any of Finnegan’s U.S. offices and requires a hybrid/onsite schedule. Two shift options are available: 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 Senior Patent Paralegal coordinates with attorneys, clients, foreign counsel, and firm departments to manage U.S. and international patent matters. The position handles filings and formalities, maintains accurate files and database information, drafts correspondence and client reports, researches issues, and helps ensure compliance with client-specific procedures. The role also supports training and development, mentors other staff, adopts new processes and technology, and assumes greater responsibilities as experience is gained. The base annual pay range is $105,000 to $120,000. The offered base pay varies according to 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; this may change for a lateral Senior PPA 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 USPTO or international electronic filing procedures.
Ability to prepare and file new U.S. and national stage applications, new PCT applications, and other responses in the PTO as required.
Knowledge of Microsoft Office Suite, including Teams and Zoom, and ability to learn IP operations and firm systems and databases.
Solid experience with case/matter management and/or other database tools and technologies for managing 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, handle multiple projects simultaneously, manage 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 to ensure deadlines are met and seek client instructions as necessary.
Provide attorneys with information and materials, identify issues, and communicate potential options for addressing them.
Determine, distribute, and ensure compliance with client-specific procedures; serve as a resource for client teams and maintain relationships with clients.
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/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/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 utility, continuation, divisional, and CIP matters.
Process invoices and review draft client bills for accurate time and disbursement entries; suggest edits to billing attorneys and attend to invoice payment.
Download and appropriately save art cited by patent office examiners.
Record billable and non-billable time according to firm and client standards.
Forward substantive matters, such as Office Actions, to the working or reviewing attorney.
Prepare and instruct foreign counsel on national stage applications, coordinate associated filing formalities, and work with foreign counsel to resolve issues and recommend solutions to attorneys.
Maintain docket identification for matters assigned to Patent Paralegals.
Contact examiners or patent offices for clarification or to address communications sent in error.
Prepare and file new U.S. and national stage applications, new PCT applications, and other responses in the USPTO as required by attorneys.
Prepare monthly client reports without prompting from attorneys or clients.
Maintain accurate database tracking information as directed and generate reports as needed.
Conduct factual research on clients, competitors, and other topics as directed.
Attend and participate in patent prosecution and technology training; may teach or develop training materials.
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 within assigned work as experience is gained.
Perform other duties as assigned.