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Patent Paralegal

2 months ago

new york city, United States Offit Kurman, P.A. Full time

Offit Kurman is seeking a detail-oriented and highly organized Patent Paralegal to join our intellectual property (IP) team. The Patent Paralegal will be responsible for supporting patent attorneys with the preparation, filing, and management of patent applications, maintaining patent portfolios, and ensuring compliance with all relevant legal requirements. This role requires a strong understanding of patent law and the ability to manage multiple tasks with accuracy and efficiency.


This is a hybrid position where you will be required to come into the office a few days a week.


KEY RESPONSIBILITIES

Patent Application Preparation:

  • Assist in drafting, reviewing, and filing U.S. and international patent applications, including provisional and non-provisional applications.
  • Prepare and file Information Disclosure Statements (IDS), assignments, and other patent-related documents.
  • Conduct patent searches and analyze prior art to support patent prosecution and litigation efforts.

Docket Management:

  • Maintain and update the patent docketing system to track deadlines and ensure timely filings.
  • Monitor and manage deadlines for patent prosecution, including Office Action responses and maintenance fee payments.

Correspondence:

  • Prepare correspondence with clients, inventors, and foreign associates regarding patent matters.
  • Communicate with the U.S. Patent and Trademark Office (USPTO) and international patent offices as needed.

Patent Portfolio Management:

  • Assist in managing and maintaining the patent portfolio for clients, ensuring that all patents are up to date and properly maintained.
  • Support the preparation of reports and summaries related to patent portfolios.

Legal Research:

  • Conduct legal research on patent-related matters, including changes in patent law and regulations.
  • Assist attorneys with patent litigation support, including gathering and organizing documents for discovery.

Administrative Support:

  • Organize and maintain physical and electronic files related to patents.
  • Provide administrative support to patent attorneys and agents as needed.


QUALIFICATIONS:

  • Bachelor’s degree or Paralegal Certification preferred.
  • Minimum of 5 years of experience as a paralegal, with a focus on patent law.
  • Strong understanding of U.S. and international patent law and procedures.
  • Proficient in patent docketing systems and other relevant software (e.g., IP management software).
  • Excellent organizational and time management skills, with the ability to prioritize tasks and meet deadlines.
  • Strong written and verbal communication skills.
  • Attention to detail and accuracy in all tasks.
  • Ability to work independently and as part of a team.


PREFERRED QUALIFICATIONS:

  • Experience in a law firm or corporate legal department specializing in intellectual property.
  • Familiarity with the Patent Cooperation Treaty (PCT) process.
  • Knowledge of patent litigation procedures and requirements.