Senior Patent Paralegal

Finnegan•Boston, MA

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 filings, manage deadlines, and draft related correspondence. The role also monitors filing deadlines, records time, edits client bills, and processes invoices in accordance with client standards and firm procedures. The position may be based in any of Finnegan’s U.S. offices and requires a hybrid/onsite work 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 works independently while coordinating closely with attorneys, clients, foreign counsel, and firm staff. The role includes managing U.S. and international patent prosecution matters, maintaining accurate files and database information, supporting billing and client reporting, and mentoring and training other staff. The annual base pay range is $105,000–$120,000; the amount offered depends on 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, subject to 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 elevating issues to appropriate representatives when clarification is needed.
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 responses in the USPTO 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 used to manage data and information.
Expert research skills and proficiency using 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.
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 identify issues, and clearly communicate potential ways to address them.
Determine, distribute, and ensure compliance with client-specific procedures; serve as a leader and resource for client teams and maintain client relationships to address procedural changes and issues.
Review USPTO and foreign patent office reports and papers, such as 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 recordation, issue fee payments, and certificates of correction.
Draft correspondence to clients, foreign counsel, and others.
Respond to client, attorney, and staff inquiries in a timely manner.
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.
Maintain complete and orderly files.
Remain current on USPTO rules and regulations and/or international practice.
Open new matters, including utility, continuation, divisional, and continuation-in-part matters.
Process invoices.
Download art cited by 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 filing formalities and work with foreign counsel to resolve issues for attorney recommendations.
Ensure matters assigned to Patent Paralegals are specifically identified on the docket.
Contact examiners or patent offices when clarification is needed or communications were 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 and/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; 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 within assigned work as experience is gained.
Perform other duties as assigned.