Patent Prosecution Paralegal

Patent Prosecution Paralegal

Philadelphia, PA

Under attorney supervision, the Patent Prosecution Paralegal works effectively and collaboratively with patent attorneys and clients to prosecute and maintain foreign and US patent portfolios.  The Patent Prosecution Paralegal also works with attorneys both in and outside the IP Group on due diligence, transactional and/or special projects.

Duties and Responsibilities

U.S.  Prosecution

  • Works with patent attorneys to prepare and file patent applications, responses to Office Actions, and other communications with the U.S. Patent & Trademark Office.
  • Prepares Information Disclosure Statements, and reviews references cited in related office actions for same.
  • Reviews patent application prior to payment of Issue Fee, ensuring all amendments have been entered and references cited in IDSs have been acknowledged.
  • Proofreads issued patents and prepares Requests for Certificate of Correction.
  • Prepares Assignments, Declarations, Powers of Attorney and related documentation associated with U.S. patent applications.

International Prosecution

  • Prepares and files PCT Applications, Chapter II demands, Requests for 92bis, Responses to Invitations to Correct Defects and foreign national phase applications.
  • Responds to WIPO communications and corresponds with foreign associates to facilitate ongoing prosecution of foreign patent applications.
  • Prepares and files translations and formal papers for each national phase patent application filed, adhering to the rules and requirements of the specific country.
  • Coordinates filing of patent applications in non-PCT countries.
  • Prepares lists of references to be cited in foreign countries and communicate same to foreign associates.
  • Obtains instructions from client and coordinates filing of Requests for Examination.
  • Obtains instructions from client and coordinates payment of grant fees and accumulative annuities.

Dockets

  • Generates docket reports and monitors docket on a daily basis.
  • Communicates updates/changes to attorneys.
  • Works closely with attorneys, clients and foreign associates to remind them of deadlines, obtain instructions and meet filing deadlines.

Timekeeping

  • Meets the Firm’s billable hours expectation and adheres to best practices for daily time entry for client work.

Qualifications

  • Education:  Associate’s or Bachelor’s degree preferred, or any combination of training and experience that provides the required knowledge, skills, and abilities is qualifying.
  • Experience:  Five or more years of patent prosecution paralegal experience in a law firm or in-house legal department setting.

Required Skills 

  • Proficient in U.S. and international patent prosecution laws and procedures.
  • Strong written and verbal communication skills.
  • Strong proofreading and organizational skills, with attention to detail.
  • Proficient in Microsoft Office Suite (Excel, Word, PowerPoint).
  • Working knowledge of LexisNexis, Westlaw, and other litigation research databases.
  • Familiarity with Electronic Case Filing (CM/ECF) procedures.
  • Ability to handle multiple projects with changing priorities, meet critical deadlines, work within a team, and demonstrate initiative.
  • Establish and maintain effective working relationships with those contacted in the course of work.

 

If you possess the level of experience and qualifications outlined above, please send your cover letter and resume to recruiting@offitkurman.com. Please reference the position, Patent Paralegal (Philadelphia) in your letter.

Please, no recruiter contact.

Offit Kurman, P.A. is an Equal Employment Opportunity Employer.