Paralegal (Patent Prosecution)

The Paralegal is a member of the Health Care Life Sciences (HCLS) Practice Group and is assigned to specific matters, clients, projects and attorney teams. The Paralegal assists the practice group to function in a consistent productive manner; is responsive and ensures all day-to-day responsibilities are met under established policies and procedures while exercising discretion and confidentiality in maintaining contact with clients, attorneys, and staff.

There is an annual billing component to this role of 1,500 hours.

Essential Duties and Responsibilities: 

• Ensure policies and procedures are being followed on a day-to-day basis in relation to assigned duties, including client special instructions and in accordance with established firm guidelines.

• Monitor deadlines associated with the US and international dockets, including providing follow-up with attorneys, clients, and management in order to provide adequate time to respond.

• Review daily docket reports in accordance with established firm guidelines and correspond with the IP docket department regarding same.

• Prepare and file patent applications, pre-grant filings and other associated filings with the USPTO and PCT under attorney supervision.

• Efficiently manage Information Disclosure Statement (IDS) data; prepare and file IDS with the USPTO under attorney supervision. 

• Prepare and manage the recordation of assignments and name changes in the US and internationally.

• Working knowledge and effective application of CFR and MPEP is required. 

• Review and report USPTO and foreign correspondence in a timely manner. 

• Receive and act upon client instructions, including confirmation and/or draft response to client inquiries related to US, PCT and foreign applications.

• Utilize USPTO and other related government agency electronic resources effectively.

• Create and maintain electronic worksheets to assist attorneys in managing client requirements as needed.

• Maintain the firm’s official file utilizing the document management system.

• Track and record billable and non-billable time per firm policy.

• Responsible for maintaining and prioritizing work on a daily basis and communicating if unable to meet daily responsibilities.

• Demonstrate good teamwork skills within and among practice groups, offices, and firm to facilitate efficient delivery of legal services.

• May participate in the training and professional development of other paralegals in routine practice elements.

• Willingness and flexibility to work closely with all attorneys and staff as needed.

• Provide back-up support to other team members as needed.

• Manage workflow and effectively communicate with assigned team.

Knowledge, Skills, and Abilities:

• Proficiency with US, PCT and international patent law.

• Strong interpersonal skills necessary to communicate and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with courtesy and tact.

• Ability to manage and work independently in a hybrid, and in-office setting.

• Ability to work effectively both independently and with teams to promote consistent and efficient workflow processes.

• Ability to work under pressure while producing a high volume of information with attention to detail while producing an accurate work product. 

• Willingness and ability to accept changing assignments and priorities.

• Ability to compose, proofread and edit (e.g., punctuation, grammar, spelling) routine memorandums and correspondence.

• Ability to identify and analyze complex issues and problems and to recommend and implement solutions.

• Strong working knowledge to utilize various online electronic filings with government agencies and to maintain worksheets for clients. 

• Proficient in Microsoft Office Products (Word, Excel, Outlook, PowerPoint, Teams, OneNote).

• Strong organizational and administrative skills.

• Ability to search various websites to locate information in order to communicate with clients or maintain accurate information in the firm’s various software applications associated with IP.

• Ability to provide quality client service to both internal and external clients effectively and professionally.

Education and/or Experience: 

• Bachelor’s degree is required; or any combination of specialized training, education and experience that demonstrates the ability to perform the duties of the position.

• Minimum eight (8) years of progressive patent prosecution experience, including docket management, application filings and prosecution to gain an understanding to provide support and planning that will ensure a high quality and accurate work product.

• Working knowledge of sequence listings highly preferred.

This position description is intended to describe the general content of and requirements for the performance of the job.  The statements contained in the position description are not necessarily all-inclusive and additional duties and responsibilities may be assigned as determined by business needs.

This position description does not constitute a written or implied contract of employment.

Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

Compensation is dependent on several factors, such as position, location, market, education, training, and/or experience.