IP Paralegal - US & Foreign Filing
Job Description
| Ref No.: | 19-03415 |
| Location: | Boston, Massachusetts |
Job Description:
In this role, you will report to the Intellectual Property Manager. You will be responsible for providing a high-level of efficient and timely support for a variety of the firm's clients. The IP paralegal will assist with the preparation of US and foreign documents for filing in respective patent offices, prepare follow-on prosecution documents, track and communicate deadlines, perform relevant on-line searches, prepare cost estimates, and review intake of daily correspondence to determine what needs to be communicated to the client.
RESPONSIBILITIES:
• Develops a standard workflow and prioritizes work tasks; becomes proficient in new processes.
• Assists in developing foreign filing letters based upon new rules/laws.
• Prepares supporting documents for attorneys, including but not limited to, the following:
US and PCT application filing papers, including Declarations, Assignments, and Powers of Attorney;
US prosecution/follow on papers, including Responses to Missing Parts/Corrected Papers, Responses to Office Actions, Petitions, Assignment recordations, Issue Fee and related/other USPTO forms;
PCT follow on papers, including Responses to Invitations, PCT Powers of Attorney, Notification of Recording of Change, and other related PCT communications;
Prepares instructions to foreign associates for filing national patent applications in various foreign patent offices, and completes all formality requirements;
Prepares US and foreign filing estimates;
Reviews incoming correspondence, including paper and electronic mail, and takes/facilitates necessary action; and,
Works with outside vendors to obtain formal drawings and legalization of documents.
• Complies with docket and de-docketing practices.
• Manages the docket of US and foreign applications to ensure all dates are accurate and outstanding deadlines are met timely.
• Assumes additional responsibilities as assigned.
QUALIFICATIONS:
• BA/BS degree required.
• 2-3 years' experience as a paralegal in US and foreign intellectual property practice.
ADDITIONAL SKILLS/EXPERIENCE:
• Knowledge of procedural requirements for filing US and PCT patent applications with the USPTO and the World Intellectual Property Office (WIPO).
• Hands-on electronic filing experience at the USPTO.
• Knowledge of foreign filing and national phase entry procedural requirements.
• Proficiency in Microsoft Office.
• Excellent grammar, spelling and proofing for content and context.
• A high degree of organization, flexibility and reliability to set priories, manage multiple responsibilities and work well under pressure.
• Ability to assume responsibility for assigned tasks, and if necessary, able to delegate workload in order to manage multiple tasks and meet deadlines.
• Strong verbal and written communication skills; excellent interpersonal skills.
• Ability to work collaboratively with team members as well as attorneys and staff throughout the firm.
• Adaptable to last minute changes and disruptions, and able to accommodate occasional overtime work when required.
In this role, you will report to the Intellectual Property Manager. You will be responsible for providing a high-level of efficient and timely support for a variety of the firm's clients. The IP paralegal will assist with the preparation of US and foreign documents for filing in respective patent offices, prepare follow-on prosecution documents, track and communicate deadlines, perform relevant on-line searches, prepare cost estimates, and review intake of daily correspondence to determine what needs to be communicated to the client.
RESPONSIBILITIES:
• Develops a standard workflow and prioritizes work tasks; becomes proficient in new processes.
• Assists in developing foreign filing letters based upon new rules/laws.
• Prepares supporting documents for attorneys, including but not limited to, the following:
US and PCT application filing papers, including Declarations, Assignments, and Powers of Attorney;
US prosecution/follow on papers, including Responses to Missing Parts/Corrected Papers, Responses to Office Actions, Petitions, Assignment recordations, Issue Fee and related/other USPTO forms;
PCT follow on papers, including Responses to Invitations, PCT Powers of Attorney, Notification of Recording of Change, and other related PCT communications;
Prepares instructions to foreign associates for filing national patent applications in various foreign patent offices, and completes all formality requirements;
Prepares US and foreign filing estimates;
Reviews incoming correspondence, including paper and electronic mail, and takes/facilitates necessary action; and,
Works with outside vendors to obtain formal drawings and legalization of documents.
• Complies with docket and de-docketing practices.
• Manages the docket of US and foreign applications to ensure all dates are accurate and outstanding deadlines are met timely.
• Assumes additional responsibilities as assigned.
QUALIFICATIONS:
• BA/BS degree required.
• 2-3 years' experience as a paralegal in US and foreign intellectual property practice.
ADDITIONAL SKILLS/EXPERIENCE:
• Knowledge of procedural requirements for filing US and PCT patent applications with the USPTO and the World Intellectual Property Office (WIPO).
• Hands-on electronic filing experience at the USPTO.
• Knowledge of foreign filing and national phase entry procedural requirements.
• Proficiency in Microsoft Office.
• Excellent grammar, spelling and proofing for content and context.
• A high degree of organization, flexibility and reliability to set priories, manage multiple responsibilities and work well under pressure.
• Ability to assume responsibility for assigned tasks, and if necessary, able to delegate workload in order to manage multiple tasks and meet deadlines.
• Strong verbal and written communication skills; excellent interpersonal skills.
• Ability to work collaboratively with team members as well as attorneys and staff throughout the firm.
• Adaptable to last minute changes and disruptions, and able to accommodate occasional overtime work when required.
Application Instructions
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