Finnegan Henderson Farabow Garrett & Dunner

Patent Paralegal II

Finnegan Henderson Farabow Garrett & Dunner • $70K — $95K *
Boston, MA 02115In-Person
Legal & Accounting
Less than 5 years of experience
Today
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Job Overview by Ladders

Qualifications

  • Bachelor's degree and 3 years of patent prosecution experience; or 5 years of experience in a law firm environment required.
  • Knowledge of international and USPTO patent law rules and procedures.
  • Proficient in navigating the USPTO website and using search tools for patent information.
  • Experience with electronic filing procedures with the USPTO.
  • Strong knowledge of Microsoft Office Suite and related meeting platforms.
  • Demonstrated advanced research skills using various online tools, including government websites.
  • Strong interpersonal, oral, and written communication abilities.

Responsibilities

  • Prepare responses to USPTO notices and office actions.
  • Review files and prepare Information Disclosure Statements for U.S. and international patent applications.
  • Draft shell amendments for attorneys responding to office actions.
  • Maintain and input data in patent databases.
  • Calculate Patent Term Adjustments accurately.
  • Prepare and manage electronic filings with the USPTO, ensuring correct document formats and fee payments.
  • Create and maintain checklists for Notices of Allowance.

Benefits

  • Full range of medical benefits offered.
  • Financial benefits dependent on position.
  • Professional development and training opportunities available.
Full Job Description
Role Overview

The Patent Paralegal II will assist the IP Operations team with administrative tasks, including preparation of filings, managing deadlines, and drafting related correspondence needed for filing patent applications.

Responsibilities
  • Prepares responses to USPTO notices and office actions, information disclosure statements, issue, and publication fees.
  • Reviews files and prepares Information Disclosure Statements for U.S. and international patent applications.
  • Prepares shell amendments for use by attorneys in preparation of proposed responses to outstanding office actions.
  • Performs database input and maintenance.
  • Calculates Patent Term Adjustments.
  • Prepares/loads USPTO forms for electronic filing to include designating correct document types and formats, fee types, and ensuring credit and payment of fees.
  • Creates and maintains Notice of Allowance checklists.
  • Submits Certificate of Corrections and Priority Document requests.
  • Researches and locates files as requested by staff and attorneys.
  • Accurately and timely reconciles and processes invoices and other financial documents in accordance with firm procedures.
  • Mentors, trains, provides guidance, and acts as a resource to Patent Paralegal Is, and other staff as needed.
  • Completes core training/cross-training, skills assessments and related development as assigned.
  • Utilizes appropriate resources to stay current and maintain proficiency in patent prosecution areas of practice.
  • Embraces new processes and incorporates new technology to meet client demands as they evolve.
  • Completes and actively seeks out professional development training/experience and demonstrates the ability to assume progressive responsibilities within assigned work as experience is gained in the position
  • Other duties as assigned.

Qualifications
  • Bachelor's degree and minimum of three years of patent prosecution experience in a professional services or law firm environment; OR in lieu of a degree, a minimum of five years of patent prosecution experience in a law firm environment required.
  • Demonstrated knowledge and understanding of international and USPTO (U.S. Patent and Trademark Office) patent law rules, procedures, and requirements.
  • Ability to navigate USPTO website and demonstrated knowledge of search tools for patent and trademark information.
  • Experience with Electronic Filing USPTO procedures.
  • Knowledge of patent prosecution concepts and ability to apply concepts to the appropriate assignments.
  • Knowledge of Microsoft Office Suite, including meeting platforms such as Teams and Zoom, and the ability to learn the systems and databases used by the IP operations department and the firm.
  • Advanced research skills and proficiency in using various research tools, including the Internet and government websites.
  • Strong interpersonal, oral, and written communication skills.
  • Strong organizational skills and the ability to exercise independent judgment, prioritize assignments, handle multiple projects simultaneously, manage a diverse workload, and meet deadlines in a fast-paced environment.
  • Must exhibit professionalism and have the ability to work independently and as part of a team.


If you are a strategic thinker with a passion for promoting success, we would love to hear from you.

Available to all U.S. Office locations. The base annual pay range for this role is between $70,000 - $95,000. The base pay to be offered will vary and depend on skills and qualifications, experience, location and will also take into account internal equity. A full range of medical, financial and/or other benefits dependent on the position will also be offered.

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About Finnegan Henderson Farabow Garrett & Dunner

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is one of the largest IP law firms in the world. The firm has over 300 attorneys and patent agents in nine offices in the United States, Asia, and Europe. Finnegan's practice includes all aspects of patent, trademark, copyright, and trade secret law, including counseling, prosecution, licensing, and litigation. The firm also represents clients on IP issues related to international trade, portfolio management, the Internet, e-commerce, government contracts, antitrust, and unfair competition. Finnegan has represented clients from a range of industries, including pharmaceuticals, biotechnology, electronics, computers, telecommunications, automotive, energy, and consumer products.
Learn more about Finnegan Henderson Farabow Garrett & Dunner
Size
1,000 employees
Industry
Legal & Accounting
Founded
1965
* Ladders Estimates

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