Intellectual Property Senior Paralegal
Intellectual Property Senior Paralegal – US and FOREIGN FILING
Our client has as an Intellectual Property Senior Paralegal. The IP Senior Paralegal will assist with the preparation of US and foreign documents for filing in respective patent offices, prepare follow-on prosecution documents, track and communicate deadlines, perform relevant on-line searches, prepare cost estimates, and review intake of daily correspondence to determine what needs to be communicated to the client.
This position is a full-time, non-exempt position in the Boston office. The regular hours will be 9:30 a.m. to 5:30 p.m., Monday through Friday, offering the flexibility to work remotely two days a week. In addition, straight time is paid for hours worked in excess of 35 to 40 in the workweek. Overtime is in effect after the completion of 40 hours in the workweek. From time to time, it may be necessary for the IP Senior Paralegal to work additional hours or change their hours to ensure all coverage and/or deadlines are met.
- Develops a standard workflow and prioritizes work tasks; becomes proficient in new processes.
- Assists in developing foreign filing letters based upon new rules/laws.
- Prepares supporting documents for attorneys, including but not limited to, the following:
- US and PCT application filing papers, including Declarations, Assignments, and Powers of Attorney;
- US prosecution/follow on papers, including Responses to Missing Parts/Corrected Papers, Responses to Office Actions, Petitions, Issue Fee and related/other USPTO forms;
- PCT follow on papers, including Responses to Invitations, PCT Powers of Attorney, Notification of Recording of Change, and other related PCT communications;
- Prepares instructions to foreign associates for filing national patent applications in various foreign patent offices, and completes all formality requirements;
- Prepares US and foreign filing estimates;
- Reviews incoming correspondence, including paper and electronic mail, and takes/facilitates necessary action; and,
- Works with outside vendors to obtain formal drawings and legalization of documents.
- Complies with docket and de-docketing practices.
- Manages the docket of US and foreign applications to ensure all dates are accurate and outstanding deadlines are met timely.
- Assumes additional responsibilities as assigned.
- Bachelor’s degree preferred
- 7+ years’ experience as a paralegal in US and foreign intellectual property practice.
- Knowledge of procedural requirements for filing US and PCT patent applications with the USPTO and the World Intellectual Property Office (WIPO).
- Hands-on electronic filing experience at the USPTO.
- Knowledge and expertise of foreign filing and national phase entry procedural requirements.
- Proficiency in Microsoft Office.
- Excellent grammar, spelling and proofing for content and context.
- Excellent interpersonal skills, including strong communication skills, tact and diplomacy, as well as the ability to interact positively and productively with all levels of the Firm.
- Ability to assume responsibility for assigned tasks, and if necessary, able to delegate workload in order to manage multiple tasks and meet deadlines.
- Demonstrates organization, flexibility, and reliability to set priorities, as well as the ability to manage multiple responsibilities and works well under pressure.
- Detail-orientated and self-motivated.
- Ability to work both independently and collaboratively with team members as well as attorneys and staff throughout the firm.
- Adaptable to last minute changes and disruptions, and able to accommodate occasional overtime work when required.
The physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions of this position.
While performing the duties of this job, the employee is required to sit for most of their duties. There is the need to frequently walk including climbing stairs. There will be a moderate amount of standing, stooping, kneeling, bending, and reaching for some of their job duties. Visual requirements include reading off of a computer screen as well as printed materials. A high degree of dexterity is required due to frequent use of a keyboard and telephone. Verbal and auditory requirements include the ability to communicate clearly over the telephone as well as in person. There is a low level of grasping, lifting, pushing and/or pulling of objects of less than 25 lbs.