Patent Prosecution Paralegal

2 months ago

Chicago, United States Perkins Coie Full time

Job Description:

Perkins Coie LLP's nationally recognized Intellectual Property group is seeking a highly motivated Patent Prosecution Paralegal to join our team. This position will assist throughout the firm with coordinating and supporting all phases of U.S. and international patent prosecution matters. The individual in this role must possess experience and understanding of all aspects of U.S., Patent Cooperation Treaty (PCT), and foreign patent prosecution case support including preparing and filing patent applications and prosecution documents via the electronic filing systems, data collection and review, and utilizing document/information management databases. The applicant must demonstrate the ability to conduct legal research and complex factual investigations.

ESSENTIAL FUNCTIONS

The following essential functions are primary job duties that incumbents must be able to perform unassisted or with some reasonable accommodation.

  • Prepare and file patent and design applications and prosecution documents via the United States Patent and Trademark Office (USPTO) Patent Center.
  • Prepare and file PCT applications via ePCT and the USPTO Receiving Office.
  • Communicate with clients, government agencies/officials, foreign agents, consultants, and other parties regularly to collect and assemble information. Communicate findings to the appropriate parties.
  • Manage a docket and track deadlines on a secondary docket. Monitor and follow up with the appropriate parties on action items and filing deadlines.
  • Manage client portfolios including preparing and maintaining status reports and prior-art charts.
  • Maintain current knowledge of U.S. and PCT rules as they relate to the Patent Prosecution practice.
  • Assist with client transfers including review of the chain of title, submission of Revocation and Substitute Power of Attorney documents to the USPTO, and preparation and review of electronic file history.

SPECIFIC SKILLS REQUIRED

  • Thorough knowledge of all phases of U.S. and PCT patent prosecution processes, procedures, databases, and filing systems.
  • Familiarity with international procedures, corresponding with foreign associates, and managing foreign deadlines.
  • Possession of superb organizational, analytical, and communication skills.
  • Ability to establish effective working relationships with the firm's lawyers and business professionals, clients, and other professionals.
  • Ability to handle multiple assignments, ability to work well under pressure, and the flexibility to assist the team in meeting client demands on accelerated schedules.
  • Possession of basic computer skills including Word, Excel, PowerPoint, Acrobat, and Outlook.

EDUCATION AND EXPERIENCE

  • Five-plus years of recent experience working as a patent prosecution secretary or paralegal in a law firm or in-house legal department or equivalent is required.
  • A paralegal certificate or bachelor's degree is a strong plus.

At Perkins Coie, we look for self-motivated individuals dedicated to providing value and superior service and who have a high degree of integrity and enthusiasm for their work. We have created a company culture based on collaboration, devotion to serving our clients, and mutual respect. Perkins Coie is committed to advancing diversity and inclusion both within the firm and throughout our collective communities. Work with one of the 100 Best Companies to Work For and receive great health insurance, tuition reimbursement, and paid sabbaticals.

This position is eligible for an annual discretionary bonus, 401(k) plan, medical, dental, and vision insurance, accrued paid time off plan starting at 20 days annually, personal medical and parental leave, up to 10 paid holidays, and family care benefits. More information regarding benefits and programs may be found here.

This position may be filled in the following location(s).The compensation depends on qualifications and experience.

San Francisco Bay Area compensation range: $72,380 to $130,290 annually

Colorado compensation range: $56,710 to $102,080 annually

Los Angeles compensation range: $66,040 to $118,880 annually

San Diego compensation range: $65,200 to $117,370 annually

Washington state compensation range: $59,820 to $107,680 annually

Qualified applicants with arrest or conviction records will be considered for employment in accordance with the Los Angeles County Fair Chance Ordinance for employers and the California Fair Chance Act.

#LI-Hybrid

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