Intellectual Property (IP) Paralegal

Overview

A global law firm is seeking an experienced Intellectual Property (IP) Paralegal to join their team. This position supports attorneys in managing patent prosecution and trademark matters, including research, analysis, docketing, and e-filing. The role also involves general administrative duties and special projects related to IP matters. The position is remote-based with office locations in New York City, Washington D.C., Minneapolis, Dallas, Houston, or Austin.

Responsibilities

• Manage and organize U.S. and foreign patent and trademark dockets 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 submissions such as responses to office actions and issue fee payments with the USPTO
• Prepare and file PCT applications with the International Bureau and USPTO
• Effect national phase entry of PCT applications
• Prepare client formalities for execution (e.g., Declarations, Assignments, Power of Attorney)
• Perform assignment searches, recordings, and manage chain of title projects
• Manage docketing and calendaring with sensitivity to deadlines
• Update files with USPTO patent center database and prepare responses as needed
• Review, file, and prepare Information Disclosure Statements and related documents
• Draft shells for Office Action Responses
• Maintain client portals, update client status charts, run docket reports for portfolio analysis, and communicate with clients regarding deadlines 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
• Manage portfolio transfers and multi-client portfolios
• File and assist in prosecution of design applications, including convention deadlines for foreign filings
• Proofread and edit patent and trademark applications, formal documents, and office actions
• Meet ethical and professional requirements and stay current on learning and development
• Manage time effectively to meet internal and external deadlines, including during periods of intense work
• Fulfill administrative responsibilities such as timekeeping and billing
• Assist with other department activities and perform additional duties as assigned
• Flexibility to work overtime as needed

Requirements

Skills & Competencies

• High attention to detail and outstanding organizational skills
• Ability to manage time effectively and work under pressure to meet strict deadlines
• Maintain composure, professionalism, and a positive outlook in high-stress situations
• Recognize and maintain confidentiality of sensitive information
• Self-motivated and proactive with minimal supervision
• Ability to work independently and collaboratively in a cross-functional team
• Excellent oral and written communication skills with professional demeanor

Education & Experience

• Bachelor’s Degree required; Certificate in Paralegal Studies from an accredited institution preferred; equivalent experience considered
• Certified Paralegal designation is a plus
• Minimum of 5 years of relevant professional experience; law firm experience preferred
• Extensive knowledge of U.S. patent rules and procedures; knowledge of PCT and/or national laws of other countries
• Experience with Anaqua software is a plus
• Copyright application filing experience is a plus

Technology

• Proficiency with Windows-based software and Microsoft Office Suite (Word, PowerPoint, Excel, Outlook)
• Strong computer skills with ability to quickly learn new software applications
• Experience with iManage is a plus

Compensation & Benefits

• Hourly pay range: $40.86 to $49.03
• Salary determined by education, experience, job-related factors, internal equity, and market data including geographic differentials
• Full-time employees may be eligible for discretionary bonuses
• Benefits include health insurance with optional HSA, short and long-term disability, dental and vision insurance, life insurance, healthcare and dependent care flexible spending accounts, 401(k), vacation, sick time, and employee assistance program
• Additional voluntary benefits: accident insurance, life insurance, disability, critical illness and cancer insurance, pet insurance
• Commuter and transit programs may be available in certain markets

Location

Remote position with office locations in New York City, Washington D.C., Minneapolis, Dallas, Houston, or Austin.