Foreign Filing Paralegal (Flexible Location)

Overview

A leading global law firm is seeking an IP Foreign Filing Paralegal to support clients, attorneys, paralegals, and secretaries in all aspects of patent foreign filing, U.S. National Stage, and U.S. Bypass Continuation Application Filings. This role requires staying current on U.S., PCT, and foreign patent rules and changes in national offices. The position reports directly to the Manager of IP Prosecution Services.

Responsibilities

• Prepare and submit patent filings in all foreign jurisdictions, including PCT, Paris Convention, and national phase filings.
• Use ePCT to prepare electronic international application packages for filing with the U.S. Receiving Office or directly with the International Bureau when appropriate.
• Prepare instructions to foreign associates outlining client instructions for direct and national phase patent applications.
• Review and maintain docket of associated deadlines for assigned clients, managing and tracking all aspects of foreign formalities related to filing.
• Coordinate with outside vendors for foreign formalities such as translations, formal drawings, and apostille/legalization to comply with country law requirements.
• Prepare draft estimates for various stages of foreign prosecution from direct or PCT filing to Regional Validations stage; knowledge of Global IP Estimator is a plus.
• Manage large name change projects across multiple jurisdictions.
• Review large patent schedules and verify information against foreign patent office databases.
• Serve as the primary contact for foreign associates from first filing to request for examination.
• Timely report incoming foreign mail and as-filed documents to clients.
• Coordinate status of transferred applications and notify foreign associates of bulk changes to assignee, docket numbers, and attorney assignments.
• Prepare and file disclosure documents in relevant copending applications and understand disclosure rules in foreign jurisdictions.
• Keep current with changes in foreign country law.

Requirements

• Bachelor’s Degree.
• Minimum of 3 years of foreign filing experience in a fast-paced law firm environment.
• Experience with life sciences-based patent prosecution is strongly preferred.
• Strong attention to detail with the ability to manage multiple tasks simultaneously and meet deadlines with minimal supervision.
• Sound judgment and ability to maintain confidentiality of sensitive information.
• Proactive problem identification and solution development skills.
• Ability to work independently and escalate concerns when necessary.
• Excellent interpersonal, organizational, and communication skills, both written and verbal.
• Ability to work well in a team environment and maintain a positive atmosphere.
• Strong technical skills in Microsoft Word, Excel, and patent docketing software; experience with ePCT and Foundation IP is a plus.
• Experience with PatDocs, Derwent, and TotalPatent One is advantageous.
• Willingness and flexibility to work overtime as needed.

Compensation & Benefits

• Anticipated salary range: $90,000 - $120,000.
• Actual salary will be based on qualifications, relevant experience, education, certifications, and location.

Location

• This position requires physical presence in the office regularly (at least 3 times per week or more as business needs require).

Equal Opportunity

The employer is committed to providing an equal opportunity work environment without regard to race, color, gender, age, creed, sex, religion, national origin, disability, marital status, citizenship, ancestry, sexual orientation, gender identity or expression, or any other legally protected status.