Patent Prosecution Paralegal

2 weeks ago

Dallas, United States Lexitas Legal Talent Outsourcing Full time

Our client, a prestigious, national law firm, seeks a Patent Prosecution Paralegal to be based in their Dallas office. This is a hybrid position.

This position will support the Dallas Intellectual Property &Technology (IP&T) Practitioners and the national IP&T Practice Group. This position will report to the Practice Group Leader, with daily work performed primarily under the direction of assigned practice group lawyers and/or paraprofessionals.


Responsibilities:

  • Prepare and prosecute patent applications domestically and internationally, including electronic filings
  • Assist attorney(s) with drafting and editing domestic and foreign prosecution documents for uploading at the USPTO, including but not limited to, new applications (Provisional, Non-Provisional, Continuations, Divisionals), responses to Missing Parts, Restriction Requirements, Office Actions, Information Disclosure Statements (IDSs), and Assignment Recordations and Certificates of Correction
  • Assist attorney(s) with drafting, editing, and filing Patent Cooperation Treaty (PCT) applications
  • Work with and advise foreign counsel in connection with prosecution and maintenance of patent applications outside of the United States, including arranging for payment of bills from foreign counsel and vendors
  • Review the Notice of Allowance prior to payment of issue fees
  • Assist in preparation of declarations, certificates of correction and corrected filing receipts
  • Client reporting of incoming correspondence and completed tasks
  • Prepare status reports and other client-requested reports/tasks
  • File individual actions as needed
  • Oversee tracking and maintenance of individual dockets
  • Work with IPT Docketing Department to update docket and ensure it is accurate
  • Other duties as assigned to meet the minimum billable hour and performance based requirements for this position


Requirements:

  • Bachelor's or Associates Degree required or Paralegal Certificate and equivalent experience
  • Minimum of 5 years’ experience required providing exceptionally high-quality service
  • Applicant must have a solid understanding of both US and foreign patent lifecycles and the ability to work efficiently and accurately in a fast-paced environment
  • Familiarity with reviewing file wrappers and filing domestic applications via Private PAIR; and filing Patent Cooperation Treaty (PCT) applications via PCT Safe (or using editable PCT/RO/101 forms
  • An understanding of domestic and foreign annuities/renewals and patent docket databases, such as IP Manager, Inprotech, and/or CPI are required
  • Knowledge of the PCT Service Center Online Document Upload, WIPO PatentScope, Espacenet, European Patent Register, and other foreign patent websites a plus
  • Desire to work in a legal environment and effective time management
  • Must have superior communication skills and be able to work in a team environment
  • Must have the ability to interact and work productively with all levels of firm staff
  • Professional demeanor, attention to detail, and great organizational skills are essential
  • Strong verbal, written, analytical, organizational and interpersonal skills
  • Strong problem resolution abilities appropriately combining logic, analysis, and follow-through
  • Ability to provide direction and training to junior team members
  • Ability to maintain discretion and privacy with confidential matters and documents
  • Ability to recognize and comprehend facts and legal concepts
  • Ability to meet minimum billable hourly requirement
  • Proficiency in Microsoft Office Suite, PDF creation tool(s), document management software, Intapp or other timekeeping software, Internet required
  • Excellent client service, ability to work overtime and travel as needed


Compensation:

Competitive salary ($90k-$115k) and benefits package including medical, dental, vision, 401k, profit sharing, short-term/long-term disability, life insurance, tuition reimbursement, paid time off, paid holidays and discretionary bonuses.

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