Foreign Filing Paralegal (patent prosecution/hybrid)

Merchant and Gould PC

$75K — $100K *
Legal & Accounting
Less than 5 years of experience
Job Overview by Ladders

Qualifications

  • BA degree and paralegal certificate or equivalent experience.
  • Minimum of 3 years of relevant experience with U.S. prosecution filing.
  • Independent worker proficient at meeting critical deadlines under attorney supervision.
  • Strong organizational skills to manage multiple tasks effectively.
  • Excellent interpersonal skills for diverse communications.

Responsibilities

  • Establish and maintain foreign patent files and prepare necessary paperwork.
  • Prepare cover letters with detailed instructions for foreign associates.
  • Review incoming correspondence from foreign associates for docketing.
  • Communicate verbally and in writing with foreign associates and attorneys.
  • Assist in procedural aspects of patent prosecution.
  • Update and maintain foreign filing docket.
  • Develop and maintain good relationships with attorneys and staff.

Benefits

  • Comprehensive medical, dental, and vision insurance.
  • Life and AD&D insurance coverage.
  • Short- and long-term disability benefits.
  • 401(k) match to help save for retirement.
  • Ten firm holidays for work-life balance.
Full Job Description
Summary of Position (hybrid):

Assists in the preparation, prosecution and filing of Patent Cooperation Treaty (PCT) applications, utility patent, design patent, and utility model (hereinafter generally described as "patent") applications in foreign countries including research regarding requirements of specific countries.

Responsibilities:

1. Establishes and maintains foreign patent files: opens files, prepares paperwork for filing including specifications, claims, abstracts, drawings and formal documents.

2. Prepares cover letters to foreign associates detailing instructions for filing application.

3. Reviews all incoming correspondence from foreign associates for essential docketing and for non-substantive responses due.

4. On-going verbal and written communication with foreign associates and attorneys during filing and prosecution of foreign patent applications.

5. Assists attorney in on-going procedural aspects of prosecution.

6. Maintains and updates foreign filing docket.

7. Establishes and maintains good working relationship with attorneys and staff.

8. As appropriate, prepares estimates of filing, prosecution and maintenance costs.

9. Other tasks and projects as may be assigned.

Knowledge, skills and abilities required:
• BA degree and paralegal certificate or equivalent experience with some relevant work experience or a minimum of 3 years on-the-job experience with U.S. prosecution filing.
• Ability to work independently and meet critical deadlines under supervision of attorney.
• Ability to organize and prioritize numerous tasks and complete them under time constraints. Ability to concentrate on detailed work for up to 80% of worktime.
• Interpersonal skills necessary in order to communicate and follow instructions from a diverse group, including clients, attorneys and others, and to provide information with ordinary courtesy and tact.
• Work occasionally requires a high level of mental effort and stress while organizing and maintaining multiple cases.
• Work occasionally requires more than 37.5 hours per week to perform essential duties of the job.
• Regular attendance at work.

We are equally committed to providing competitive, affordable health and wellness benefits to help take care of yourself and your family, including: a competitive salary, a comprehensive benefits package that includes employee medical, dental, vision, life, AD&D insurance, short- and long-term disability, 401(k) match, and ten firm holidays.

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