Senior Patent Paralegal

Finnegan•Palo Alto, CA

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 documents, manage deadlines, and draft related correspondence. The role also monitors filing deadlines, enters time, edits client bills, and processes invoices in accordance with client standards and firm procedures. The position offers shifts of 9:00 a.m.–5:30 p.m. or 11:00 a.m.–7:30 p.m.; additional scheduling flexibility for the later shift may be available based on business needs and manager approval. The role may be based in any of Finnegan’s U.S. offices and requires a hybrid/onsite schedule. The base annual pay range is $105,000–$120,000, with the actual offer dependent on skills, qualifications, experience, location, and internal equity. Benefits are also offered and vary depending on the position.

Requirements

Bachelor’s degree and at least 10 years of patent prosecution experience in a professional services environment, or at least 10 years of patent prosecution experience in a law firm environment in lieu of a degree.
At least two years at the firm, subject to possible change for a lateral Senior Patent Paralegal 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, use patent and trademark information search tools, and escalate issues to appropriate representatives for clarification.
Strong experience with electronic USPTO filing or international 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 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, handle multiple projects, 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 special situations or issues require it.
Review dockets proactively, ensure deadlines are met, and obtain client instructions as necessary.
Provide attorneys with information and materials needed to meet their responsibilities, proactively identifying issues and communicating potential ways to address them.
Determine and distribute client-specific procedures, ensure compliance, and serve as a resource for client teams while maintaining relationships with clients.
Review USPTO and foreign patent office reports for accuracy and timeliness.
Prepare formalities for 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 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 download and appropriately save art cited by patent office examiners.
Record billable and non-billable time in accordance with 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 filing formalities, and work with foreign counsel to resolve issues and recommend solutions to attorneys.
Ensure matters assigned to Patent Paralegals are specifically identified on the docket.
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 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 payments.
Conduct factual research on clients, competitors, and other topics as directed.
Attend and participate in patent prosecution and other technology trainings; develop or teach training materials as appropriate.
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 increasing responsibilities as experience in the position grows and perform other duties as assigned.