Patent Paralegal

Our client, a prominent, mid-sized law firm in the heart of New York City, is seeking an experienced Patent Prosecution Paralegal. This is an on-site position in beautiful offices overlooking Central Park. Our client offers flexibility with a choice of working hours: 9:00-5:00, 9:30-5:30, or 10:00-6:00. Availability for overtime as needed is required.

Compensation: $85,000 - $90,000.

Job Description:

• Prepares and files U.S. Patent and Trademark Office (“USPTO”) documents and communications, including but not limited to new U.S. utility and design applications, continuation/continuation-in-part/divisional applications, PCT international applications, formal drawings, substitute specifications (including marked-up and clean versions), Office Action responses, petitions for extension of time, Information Disclosure Statements with accompanying documents, powers of attorney, declarations, assignments and related ownership transfers, requests for corrected filing receipts, supplemental application data sheets, responses to the USPTO notices, inter partes review petitions, issue fee payments, certificates of correction, maintenance fees, etc.
• Corresponds with foreign associates to effect national phase entry of PCT applications; attends to foreign requirements specific to each country.
• Orders certified copies of priority documents and certified copies of recorded assignments from the USPTO. Obtains published applications and patents from the USPTO and foreign patent databases. Tracks chain of title in applications and has the ability to perfect same.
• Reviews and reports interim communications received from the USPTO, such as the Filing Receipts, Notice of Acceptance of Application, Notice to File Missing Parts, Office Actions, etc. Reviews and updates the status of the patent application with the USPTO.
• Assists attorneys with preparing budgets and cost estimates for clients. Prepares status reports, patent family trees and spreadsheets for presentations. Reviews, confirms and saves incoming correspondences from the clients and foreign associates, follows-up with the clients for instructions, signed documents, etc. Opens new client-matter numbers. Maintains and updates the patent prosecution files in the electronic records management systems. Assists attorneys with invoices.
• Processes payments of all domestic and foreign patent annuities that the firm is handling. Keeps current on domestic and foreign rules regarding annuity payments.
• Monitors and maintains the patent prosecution docket. Assists with the patent prosecution docketing in CPI, as needed.
• Supports the patent prosecution department with general administrative duties and special projects, as needed.
• Effects incoming and outgoing patent portfolio transfers.

Requirements: Candidates must meet all of the following:

• Bachelor's Degree
• A minimum of 3 years patent prosecution experience in a law firm or corporate setting.
• Knowledge of both U.S. and foreign patent prosecution.
• Proficient with USPTO electronic filing system.
• Proficient with electronic research tools such as USPTO, WIPO and foreign patent databases.
• Experience with Intellectual Property docketing systems, such as CPI.
• High level of proficiency with document management and word processing software including Microsoft Office Suite applications, iManage and Adobe Acrobat.

Qualifed candidates may send resumes to [email protected].