Intellectual Property (IP) Paralegal

Overview

This role is part of the Intellectual Property (IP) practice and supports the IP Department by assisting attorneys with patent prosecution and trademark matters. The position is based on a remote basis and aligned to one of the following offices: Washington D.C., Minneapolis, or Salt Lake City. The role reports to the Senior IP Prosecution Manager.

Responsibilities

• Manage and organize U.S. and foreign patent and trademark docket and processes for multiple IP attorneys
• Prepare and file Provisional, U.S. Utility, Continuation, Divisional, Design, PCT & 371 US national stage applications, and reissue applications with the U.S. Patent and Trademark Office (USPTO)
• File follow-on patent and trademark prosecution submission requirements such as responses to office actions and issue fee payments with the USPTO
• Prepare and file PCT applications with the IB and USPTO
• Effect national phase entry of PCT applications
• Prepare client formalities for execution (e.g., Declarations, Assignments, and Power of Attorney)
• Perform assignment searches, assignment recordings, and handle chain of title projects
• Manage docketing and calendaring with strong awareness of time management and filing deadlines
• Manage and update files using the USPTO Patent Center database and prepare responses as needed
• Review, file, and prepare Information Disclosure Statements and accompanying documents
• Draft shells for Office Action Responses
• Provide client management support by maintaining client portals, updating client status charts, running client docket reports for portfolio analysis, and communicating with clients regarding upcoming U.S. patent deadlines, requests for instructions, formalities reminders, and filings
• Calculate Patent Term Adjustments and process payment of Issue Fees
• Correspond with foreign associates, oversee payment of foreign associates’ invoices, and prepare reporting letters to clients
• Effect portfolio transfers and manage multi-client portfolios
• File and assist with prosecution of design applications, including convention deadlines for filing abroad
• Proofread and edit patent and trademark applications, formal documents, and office actions; prepare office action shell responses
• Meet all ethical and professional requirements and keep up to date on firm learning and development requirements
• Meet internal and external deadlines with successful time management, including during periods of prolonged intense work during and after regular office hours
• Fulfill firm administrative responsibilities, including timekeeping and billing requirements
• Assist with other department activities as needed and perform additional duties and responsibilities as assigned
• Be flexible to work overtime as needed

Requirements

Skills & Competencies

• High attention to detail and strong organizational skills, including the ability to manage time effectively
• Ability to work under pressure to meet strict deadlines in a fast-paced, high-pressure environment
• Ability to maintain composure, a positive outlook, and professionalism
• Recognize confidential, sensitive, and proprietary information and maintain confidentiality
• Highly motivated self-starter who can work with minimal supervision and proactively contribute to a team environment
• Ability to work independently and as part of a cross-functional, collaborative team
• Excellent interpersonal and communication skills (oral and written), including active listening and clear information conveyance
• Ability to deal calmly and effectively with high-stress situations, including unfavorable situations and/or when constructive criticism is given

Education & Prior Experience

• Bachelor’s Degree required
• Certificate in Paralegal studies from an accredited institution preferred; equivalent experience considered
• Certified Paralegal a plus
• Minimum five years of relevant work experience in a professional environment; law firm experience preferred
• Extensive knowledge of U.S. patent rules and procedure
• Knowledge of PCT and/or national laws of other countries
• Previous experience with Anaqua is a plus
• Copyright application filing experience a plus

Technology

• Proficiency in Windows-based software and Microsoft Office Suite (Word, PowerPoint, Excel, Outlook)
• Exceptional computer skills and the ability to learn new software applications quickly
• Previous experience with iManage is a plus
• Basic understanding of artificial intelligence (AI), including core capabilities, limitations, and the importance of data privacy, accuracy, verification, and ethical considerations in a professional services environment
• Familiarity with or willingness to learn AI platforms (e.g., Microsoft Copilot, ChatGPT, or similar tools) and incorporate them responsibly into day-to-day workflows as appropriate and/or directed
• Proactive approach to learning and adapting to emerging AI and related technologies and contributing to a culture of innovation

Compensation & Benefits

• Expected pay range: $45.31 - $52.61 per hour
• Actual pay will be adjusted based on experience, location, and other job-related factors permitted by law.
• Full time employees may be eligible for a discretionary bonus, health insurance with an optional HSA, short term disability, long term disability, dental insurance, vision care, life insurance, Healthcare and Dependent Care Flexible Spending Accounts, 401K, vacation, sick time, and an employee assistance program.
• Additional voluntary programs may include: voluntary accident insurance, voluntary life, voluntary disability, voluntary critical illness and cancer insurance, and pet insurance.
• Commuter and Transit programs may also be available in certain markets.

Location

Remote basis aligned with one of the following office locations: Washington D.C., Minneapolis, or Salt Lake City.