Intellectual Property (IP) Paralegal

Overview

A global law firm is seeking an experienced Intellectual Property (IP) Paralegal to join their team. This role supports attorneys in managing patent prosecution and trademark matters, including research, docketing, and e-filing. The position is remote-based with office locations in New York City, Washington D.C., Minneapolis, Dallas, Houston, or Austin. The Paralegal will report to the Senior IP Prosecution Manager.

Responsibilities

• Manage and organize U.S. and foreign patent and trademark dockets and processes for multiple IP attorneys
• Prepare and file various patent applications including Provisional, U.S. Utility, Continuation, Divisional, Design, PCT, 371 US national stage, and reissue applications with the USPTO
• File follow-on patent and trademark prosecution submissions such as responses to office actions and issue fee payments
• Prepare and file PCT applications with the International Bureau and USPTO
• Handle 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 attention to deadlines and time management
• Update files in the 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, and communicate with clients regarding deadlines and filings
• Calculate Patent Term Adjustments and process issue fee payments
• Correspond with foreign associates, oversee payment of foreign associates' invoices, and prepare client reporting letters
• 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 standards and complete required learning and development
• Manage time effectively to meet internal and external deadlines, including overtime as needed
• Fulfill administrative responsibilities such as timekeeping and billing
• Assist with other department activities and special projects as assigned

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 with the ability to work independently and collaboratively
• Excellent oral and written communication skills with professional demeanor
• Ability to handle constructive criticism calmly and effectively

Education & Experience

• Bachelor’s Degree required; Paralegal certificate from an accredited institution preferred (equivalent experience considered)
• Certified Paralegal designation is a plus
• Minimum of 5 years relevant professional experience; law firm experience preferred
• Extensive knowledge of U.S. patent rules and procedures; knowledge of PCT and/or foreign national laws
• Experience with Anaqua software is a plus
• Experience with copyright application filings 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
• 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, vision, life insurance, 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 locations

Location

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