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, analysis, docketing, and e-filing. The position offers competitive compensation and benefits, with opportunities to work remotely from offices located in New York City, Washington D.C., Minneapolis, Dallas, Houston, or Austin. The role reports 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
• 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 using 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 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 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 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 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; 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 foreign national laws
• Experience with Anaqua software is a plus
• Experience with copyright application filing is a plus

Technology

• Proficiency in 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 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 locations

Location

Remote work is available from offices in New York City, Washington D.C., Minneapolis, Dallas, Houston, or Austin.