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Intellectual Property Paralegal

2 months ago


Tempe, Arizona, United States Booth Udall Fuller, PLC Full time
Job Title: Intellectual Property Paralegal

We are seeking an experienced Intellectual Property Paralegal to join our team at Booth Udall Fuller, PLC. As an Intellectual Property Paralegal, you will play a critical role in supporting our attorneys and staff in the preparation and prosecution of patent and trademark applications.

Key Responsibilities:
  • Prepare drafts of patent and trademark applications, formalities, and office action response documents.
  • Communicate with Firm attorneys and staff regarding patent and trademark application filing and prosecution matters.
  • Communicate with inventors and owners regarding approval and filing of draft patent and trademark applications, proposed responses to office actions.
  • File documents through and retrieve information from Patent Center, TEAS, TSDR, and ePCT.
  • Perform comprehensive review and revisions (as needed) of applications, specifications, claims and abstracts.
  • Working knowledge of MPEP, 37 CFR, and 35 U.S.C. procedures, regulations, and codes.
  • Support transfer of IP assets, including gathering and recording necessary assignment documents and importing relevant data and documents.
  • Monitor, maintain and clear dockets by coordinating with attorneys and staff.
  • Generate intellectual property portfolios, and other status reports as required by the client.
  • Make substantive recommendations based on detailed knowledge about the patent and trademark processes.
  • Anticipate potential issues and possess the ability to present solutions.
Requirements:
  • 5+ years of patent and trademark filing and prosecution experience at an IP law firm.
  • Positive, professional, courteous, flexible, and team-oriented.
  • Communicate clearly and thoroughly (written and verbal).
  • Experience with international patent and trademark applications and documents, including PCT and Madrid Protocol.
  • Knowledge of US and foreign patent and trademark prosecution rules and procedures.
  • Strong computer skills, including proficiency with Adobe Acrobat, Windows and Microsoft Office Suite applications (Outlook, Word, and Excel) docketing software, and timekeeping software.
  • Organized self-starter with a high attention to detail and the ability to prioritize tasks and responsibilities to meet deadlines.
Preferred Requirements:
  • CPI patent docketing software.
  • Paralegal certificate.
  • Experience using AppColl practice management software
Our Core Values:
  • Giving Value at Every Interaction.
  • Creative Problem Solvers.
  • Humbly Awesome.
  • Driven and United by Faith in the Future.
  • Respectful of a God, Family, & Work Balance.

We offer a competitive benefits package, including health and dental insurance plan options, paid vacation and sick leave, AFLAC and 401(k) savings plan with contribution matching. If you are a motivated and detail-oriented individual who is passionate about intellectual property law, we encourage you to apply for this exciting opportunity.