US Patent Paralegal

1 month ago

Boston, United States Ascension Global Staffing & Executive Search Full time
Job DescriptionJob DescriptionAscension Global Staffing & Executive Search, a Hispanic Women Owned & Operated National Recruiting Firm stands at the forefront of innovation and excellence. Led by a visionary team with a deep commitment to diversity and inclusion, our firm is dedicated to identifying and attracting top talent across the nation. With a unique blend of cultural insight and professional expertise, we pride ourselves on creating an environment that fosters success for both employers and candidates.

Out top Am Law 100 client, a global law firm, has an exciting full-time employment opportunity for a U.S. Patent Paralegal in their Boston office. They offer competitive compensation and an excellent benefits package.

Position Summary:

The U.S. Patent Paralegal will provide organizational and practice specific assistance to attorneys in the IP Prosecution Department in managing U.S. patent prosecution including related research, analysis, docketing and eFiling. Candidates should also be flexible to work overtime as needed.

Duties & Responsibilities:

  • Manages and organizes U.S. patent docket and processes for multiple IP attorneys
  • Prepares client formalities for execution (Declarations, Assignments & Power of Attorney)
  • Files Provisional, U.S. Utility, Continuation, Divisional, Design & 371 national stage applications, reissue applications, and follow-up on patent prosecution submission requirements, such as response to office actions & issue fee payments with the USPTO, including formalities and Information disclosure statement with the U.S. Patent and Trademark Office
  • Performs Assignment searches, Assignment recordings, and chain of title reviews
  • Docket management and calendaring, requiring significant awareness of and sensitivity to time management and filing deadlines
  • Manages and updates files with USPTO Pair database and prepare responses as needed
  • Drafts templates for Office Action Responses
  • Provides client management support by maintaining client portals, updating client status charts, running various client docket reports for portfolio analysis, and communication with clients regarding upcoming U.S. patent deadlines and requests for instructions and formalities reminders
  • Calculates Patent Term Adjustments and processes payment of Issue Fees
  • Reviews files and prepares of Information Disclosure Statements and accompanying documents
  • Effects portfolio transfers and manages multi-client portfolios
  • Files and assists in prosecution of design applications
  • Proofs and edits patent applications and office actions and prepares office actions
  • Meets all ethical and professional requirements of the firm and keeps up to date on all learning and development requirements at the firm
  • Meets internal and external deadlines, and successful time management, including during periods of prolonged intense work during and after regular office hours
  • Fulfills firm administrative responsibilities, including, but not limited to, timekeeping and billing requirements
  • Assists with other department activities as needed, adheres to firm policies, and performs additional duties and responsibilities as assigned

Skills & Competencies:

  • Excellent organizational skills, including the ability to perform well under pressure, manage priorities and meet deadlines
  • Ability to complete assignment with attention to detail and high degree of accuracy
  • Reliable and dependable team player
  • Exercise discretion and maintain confidentiality of client information
  • Ability to work independently, taking initiative to move projects to conclusion
  • Previous experience with Filesite is a plus
  • Must have excellent written and oral communication skills
  • Ability to engage in active listening, giving full attention to what other people are saying, taking time to understand the points being made, asking questions as appropriate
  • Ability to deal calmly and effectively with high stress situations

Qualifications & Prior Experience:

  • Minimum ten years of prior experience as a patent prosecution paralegal in a law firm or in-house legal environment
  • Knowledge of U.S. patent rules and procedures
  • High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, U.S. Patent Office Electronic Filing System, and other Internet research tools
  • Paralegal certificate from an ABA-approved program preferred
  • Four-year degree or equivalent law firm experience preferred

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