Senior Patent Paralegal

Finnegan•Atlanta, GA

2d•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, draft correspondence, and support patent prosecution matters. The position also handles docket monitoring, time entry, client bill review, invoice processing, client-specific procedures, and matter database records. The role requires independent work, sound judgment, timely communication, and collaboration with attorneys, clients, foreign counsel, and firm staff. The Senior Patent Paralegal also mentors and trains colleagues and helps adapt work practices and technology to changing client needs. The position can 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, subject to business needs and manager approval. The base annual pay range is $105,000–$120,000; the offered amount depends 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.
Must have been at the firm for at least two years; this condition 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 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 PTO 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/or other database tools and technologies used to manage 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, 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 escalating special situations or issues when needed.
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; identify issues and communicate potential ways to address them.
Determine, distribute, and help ensure compliance with client-specific procedures; maintain client relationships and address changes or issues promptly.
Review USPTO and foreign patent office reports and papers for accuracy in a timely manner.
Prepare formalities associated with USPTO filings, including application papers, Missing Parts responses, 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’s system, including communication with Records and Docket Departments.
Communicate professionally with clients, professional staff, and support staff; maintain complete and 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 standards for billable and non-billable time entry.
Download patent-office-cited art 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 associated formalities, and work with foreign counsel to resolve issues for attorney recommendation.
Maintain docket identification for matters assigned to Patent Paralegals.
Contact an examiner or patent office 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.
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 trainings; develop or deliver training materials when appropriate.
Complete assigned core training, cross-training, skills assessments, and development activities, and seek additional professional development opportunities.
Adopt new processes and technology to meet evolving client demands 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 and perform other duties as assigned.