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Patent Paralegal

2 months ago

San Francisco, United States Avance Consulting Full time

Title: Patent Paralegal

Location : San Francisco, CA (Hybrid - Tues and Wed onsite)

Duration: 6 Months with high possibility of extension


Education:

Bachelor’s degree, paralegal certification, or the equivalent in experience


Client is seeking a full-time contractor for a Patent Paralegal role. This position is required to be 2 days/week in person at the San Francisco, CA office. As a member of the IP Operations team, you will report to the Principal Patent Paralegal and help establish and protect our rights to our innovations. You will coordinate U.S. and foreign filing and prosecution, collaborating with a large team including in-house attorneys, agents, and patent paralegals, as well as outside counsel. You must be comfortable with multi-tasking and prioritization in a fast-paced environment with close attention to detail, accuracy, and timeliness. You must excel at obtaining and effectively communicating information related to pending patent applications and matters of U.S. and foreign patent law.


Essential Job Functions

Research, prepare, and draft complex legal documents for international patent filings and prosecution

Prepare aesthetic and accurate U.S. applications and PCT applications and documents using ePCT. File PCT and U.S. applications electronically through Patent Center

Work with internal attorneys, agents, and international law firms utilizing knowledge of U.S. and foreign patent rules and requirements to respond to office actions, complete formalities, and provide all materials and support. Monitor and ensure all deadlines are met

Respond to questions regarding third-party and Dolby patents from internal and external customers

Research and provide accurate responses regarding patent terms, relevant dates, priority applications, ownership, and other pertinent information by researching appropriate resources, including internal databases, attorney reports, and external specialized patent resources such as Patent Center, Espacenet, Patentscope, and world-wide patent offices

Ensure compliance with patent handling procedures

Perform other duties as assigned by immediate manager


Experience:

Minimum of three years of combined U.S. and foreign patent filing experience

Both in-house and private practice law firm experience preferred

Demonstrates integrity and honesty in all matters

Exhibits professionalism and composure in stressful situations and in meeting short deadlines

Solid knowledge of U.S. and international patent filing procedures and rules

Ability to read, understand, and extract relevant information accurately from legal documents

Solid skills in Microsoft Office applications, including intermediate to advanced skills using Word and Excel.

Experience with MxHero, Box, Anaqua or other patent and trademark docketing system a plus

The ability and willingness to learn new software applications

Strong oral, written, and organizational skills

Ability to work both independently and collaboratively



Requirements:

Should have experience and knowledge in BOTH US and foreign patent rules. Candidates who do not have both will be automatically declined.