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Senior IP Paralegal

2 months ago

San Diego, United States Manpower San Diego Full time

Job Description:

Manages dockets, portfolios, investigations, transactions, and/or litigations across the life cycle to provide comprehensive legal and operational support to department. Fulfills company's obligations by analyzing data and information, conducting research, producing documents, and executing requests. Maintains up-to-date awareness of legal framework as well as internal policies, procedures, and resources to meet department legal needs, and looks for ways to increase efficiencies. Collaborates within and outside of the company to understand needs and address issues.


Principal Duties and Responsibilities:

• Manages multiple medium to large sized and/or complex dockets, portfolios, investigations, transactions, and/or litigations across the life cycle to support company's obligations with minimal guidance.

• Leverages knowledge of relevant legal framework as well as company policies, practices, resources, systems, and tools related to one's area to provide legal support to department and other legal personnel.

• Analyzes, interprets, executes, and fulfills requests to meet obligations based on in-depth knowledge of one's legal area or business function.

• Drafts, files, produces, reviews, and/or preserves work product in fulfillment of company's obligations with little to no guidance.

• Researches, collects, and reviews data from various resources to obtain necessary information and documents; helps junior team members do the same.

• Accurately enters, analyzes, and manages legal data, runs queries, and locates and extracts information from databases with close attention to detail; helps junior team members do the same.

• Builds and maintains collaborative partnerships with internal and/or external stakeholders (e.g., in-house attorneys, outside counsel, legal analysts) with minimal guidance to understand needs, share updates, and address issues.

• Follows processes and approaches to accomplish work and recognizes ways to improve existing ones.

• Manages individual project priorities, deadlines, and deliverables with supervision.

• Makes sound, ethical, and timely decisions, solicits guidance from senior team members as needed.

The IP Legal Specialist, Senior will support the patent prosecution team by working closely with patent attorneys/agents and interacting with outside legal counsel and foreign associates. Responsibilities include:

• Preparing, filing, and prosecuting patents with the U.S. Patent and Trademark Office (USPTO) using ePCT. File PCT and U.S. applications electronically through Patent Center.

• Manage all related prosecution documents for US and PCT applications. This includes corresponding with foreign associates on foreign prosecution and timely reporting of official correspondence.

• 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.

• Preparing and filing various patent-related documents such as provisional, non-provisional, PCT, and design application transmittal papers, preliminary amendments, responses to missing parts, petitions, requests for extensions of time, information disclosure statements, notices of appeal, and paying issue fees.

• Coordinating and executing Assignments, Powers of Attorney, and Declarations.

• Managing all aspects of US, PCT, and foreign patent prosecution, including drafting formality documents, attending to document legalization, and complying with priority document requirements.

• Contributing to administrative projects to uphold the highest legal and ethical standards in the IP Department.

• Processing patent-related emails from the IP team and US and foreign patent counsel.

• Updating patent deadlines, entering commentary on their status, and removing completed deadlines upon confirmation of filing.

• Preparing, distributing, and updating docket reports for attorneys/agents as requested.

• Collaborating with attorneys/agents to track and ensure timely compliance with deadlines.

• Developing best practices and job aids to maintain a high-functioning IP Department.

• Performing additional duties as assigned.


Top Skills


1. Both in-house OR private practice law firm experience required.

2. Skilled in USPTO prosecution procedures, rules, and forms.

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

4. Supreme Docket Management, time management and organization skills.

5. Impeccable multi-tasking and prioritization in a fast-paced environment with close attention to detail, accuracy, and timeliness.

6. Skilled in exhibiting professionalism and composure in stressful situations and in meeting short deadlines.

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

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


Technologies:

• Must have strong aptitude for computer software application programs and working knowledge of applicable software programs for carrying out patent prosecution duties, including word processing, spreadsheets, data

bases, patent and trademark filing programs (USPTO e-filing, e-PCT, PCT-Safe), online services (e.g., USPTO, records management systems, and docketing programs.

• Expertise in using computer databases and web-based platforms

• Strong familiarity with the USPTO website and other US and foreign patent internet sites and tools

• Knowledge and extensive experience using ePCT. File PCT and U.S. applications electronically through Patent Center.

• Experience with Microsoft Office (especially Excel), Adobe Acrobat Professional and Visio


Required Education:


Bachelor's degree and 3+ years of experience in the legal field and 3+ years of industry-specific legal experience.

OR

Paralegal Certificate and 3+ years of experience in the legal field and 3+ years of industry-specific legal experience.

OR

High School diploma or equivalent and 6+ years of experience in the legal field and 6+ years of industry-specific legal experience.