IP Paralegal

New Haven
Sep 15, 2023
Sep 21, 2023
Contract Type
This Jobot Job is hosted by: Jake McSwain
Are you a fit? Easy Apply now by clicking the "Apply Now" button and sending us your resume.
Salary: $60,000 – $95,000 per year

A bit about us:

Our client is seeking an IP Paralegal to join their dynamic, high performing legal team and who can play an integral part supporting our IP attorneys with all aspects of filing and maintaining US and non–US patent applications and issued patents. A knowledge of US and non–US trademark practice is a strong plus. Moreover, this is a great opportunity for an exceedingly organized individual looking to make an immediate, positive difference to an impactful IP team.

Why join us?

Competitive Pay and Great Benefits!

Job Details

Position Responsibilities:
– Assist and coordinate with IP attorneys and non–US agents with respect to all US and non–US patent and trademark prosecution matters;
– Monitor due dates and provide timely reminders to responsible attorneys/agents and clients for all US and non–US deadlines;
– Prepare and file US and PCT applications, coordinate with non–US agents for filing priority and/or national stage applications, including for both utility and design patent applications;
– Examine all incoming PCT communications, ensuring timely reporting and handling of all needed responses, including search reports, written opinions, IPRP's, and other formal actions;
– Review and docket incoming US and non–US office actions and reporting, including (e.g.), deadlines, POA's, assignments, declarations, certified copies, etc., status checks, requests for examination, publications, responses to office actions, notices of allowance, issue fee payments, and all related docketing;
– Analyze correspondence received from the USPTO, WIPO, and non–US agents and patent offices, and ensure accuracy of information for docketing purposes;
– Utilize knowledge, and experience to independently assist and anticipate appropriate responses and/or course of actions in connection with patent and trademark prosecution matters;
– Actively manage Outlook Inbox correspondence with clients, agents, worldwide patent offices, and WIPO;
– Maintain a thorough knowledge of docket databases to create specialized reports and make appropriate changes as necessary;
– Sustain working knowledge of changes in international patent prosecution rules, and work with IP attorneys to suggest/implement procedural modifications to accommodate changes;
– Generate patent and trademark prosecution cost estimates as requested;
– Prepare weekly and monthly docket reports or as otherwise requested and provide docket annotations as requested and/or appropriate;
– Work closely with the IP attorneys and docketing staff to coordinate workflow of all patent and trademark prosecution matters.

Required skills and experience:
– Undergraduate degree, paralegal certificate, or commensurate working experience;
– At least 10 years of experience in a law firm or corporation as a patent paralegal;
– Significant knowledge of Anaqua or equivalent docket management software;
– Experience with patent office databases, including USPTO systems (PAIR, PatentCenter, TSDR), WIPO Patentscope, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions;
– Possess working knowledge and keep abreast of rules according to USPTO procedures, the Manual of Patent Examining Procedure (MPEP), and the Trademark Manual of Examining Procedure (TMEP);
– Exceptional attention to detail, ability to meet deadlines, prioritize work and work independently;
– Strong interpersonal skills, versatile and adaptable, ability to multi–task in fast–paced environment;
– Excellent work ethic, integrity, and commitment to professionalism;
– Strong team player;
– Creative and entrepreneurial approach to problem–solving and process improvement.

Interested in hearing more? Easy Apply now by clicking the "Apply Now" button.

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