Senior Patent Paralegal

Finnegan•Reston, VA

8d•Hybrid

About The Position

The Senior Patent Paralegal applies comprehensive knowledge of U.S. and international patent law and firm procedures to prepare filings, manage deadlines, draft correspondence, and support patent prosecution matters. The role also includes time entry, reviewing and editing client bills, processing invoices, and maintaining accurate matter records in accordance with client standards and firm procedures. This position is available on either a 9:00 a.m.–5:30 p.m. or 11:00 a.m.–7:30 p.m. shift. 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 the firm’s U.S. offices and requires a hybrid/onsite work schedule.

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 is required, subject to change for a lateral Senior Patent Paralegal 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 escalating issues for clarification.
Strong experience with electronic filing procedures for 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 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; identify and clearly communicate issues and possible options for addressing them.
Determine, distribute, and ensure compliance with client-specific procedures; serve as a resource for client teams and maintain client relationships to address procedural changes and issues.
Review USPTO and foreign patent office papers, such as office actions, 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 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 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 filing formalities and work with foreign counsel to resolve issues for attorney consideration.
Ensure the docket identifies the paralegal for matters assigned to Patent Paralegals.
Contact examiners or patent offices for clarification or to resolve 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 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 payments.
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 increasing responsibilities as experience in the position grows and perform other duties as assigned.