Senior Patent Paralegal

Finnegan•Palo Alto, CA

9d•$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 also handles docket monitoring, time entry, client billing review, and invoice processing in accordance with client standards and firm procedures. It can be based in any of the firm’s U.S. offices and requires a hybrid/onsite work schedule. Shift options are 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 base annual pay range is $105,000–$120,000, with the offered amount depending 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 ten years of patent prosecution experience in a professional services environment; alternatively, at least ten years of patent prosecution experience in a law firm environment in lieu of a degree.
At least two years at the firm, subject to change for a lateral Senior PPA 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, use patent and trademark search tools, and elevate issues to appropriate representatives for clarification.
Strong experience with electronic filing procedures for the USPTO or international offices.
Ability to prepare and file new U.S. and national stage applications, new PCT applications, and other required responses in the PTO.
Knowledge of Microsoft Office Suite, including Teams and Zoom, and ability to learn the firm’s and IP operations department’s 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 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 needed to meet their responsibilities, proactively identifying issues and communicating potential options.
Determine and distribute client-specific procedures, support compliance, and maintain client relationships to address changes and issues promptly.
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.
Remain current on USPTO rules and regulations and international practice.
Open new matters, including utility, continuation, divisional, and CIP 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 review attorney.
Prepare and instruct foreign counsel on national stage applications, coordinate filing formalities, and work with foreign counsel to resolve issues for attorney recommendations.
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 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 payment.
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.
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.
Perform other duties as assigned.