Patent Prosecution Paralegal

One of the world’s largest and most profitable international law firms, with offices in every major business center globally, seeks an experienced (5+ years) patent prosecution paralegal for their busy and growing Dallas, TX office.

8-4 or 9-5 with paid overtime and a hybrid work model of 2 days a week (Tuesdays & Wednesdays) in the office.

The firm is paying up to $80,000 – $95,000 with a bonus.

 1500 billable hours requirement annually

 Bring your incredible IP skills to the award-winning firm and work with some of the finest IP attorneys in the industry.  This position will report to the amazing Senior Director and the Paralegal Manager.

Responsibilities

  • Prepare and prosecute patent applications domestically and internationally, including electronic filings.
  • Assist attorney(s) with drafting and editing domestic and foreign prosecution documents for uploading at the USPTO, including but not limited to new applications (Provisional, Non-Provisional, Continuations, Divisionals), responses to Missing Parts, Restriction Requirements, Office Actions, Information Disclosure Statements (IDSs), and Assignment Recordations and Certificates of Correction.
  • Assist attorney(s) with drafting, editing, and filing Patent Cooperation Treaty (PCT) applications.
  • Work with and advise foreign counsel concerning prosecution and maintenance of patent applications outside of the United States, including arranging for payment of bills from foreign counsel and vendors.
  • Review the Notice of Allowance before payment of issue fees.
  • Assist in the preparation of declarations, certificates of correction and corrected filing receipts.
  • Client reporting of incoming correspondence and completed tasks.
  • Prepare status reports and other client-requested reports/tasks.
  • File individual actions as needed.
  • Oversee tracking and maintenance of individual dockets.
  • Work with IPT Docketing Department to update docket and ensure it is accurate.

 

Experience & Qualifications

 

  • Bachelor’s or Associate’s Degree is required, or Paralegal Certificate and equivalent experience.
  • Minimum of 5 years’ experience required
  • You must have a solid understanding of US and foreign patent lifecycles and the ability to work efficiently and accurately in a fast-paced environment.
  • Familiarity with reviewing file wrappers and filing domestic applications via Private PAIR; and filing Patent Cooperation Treaty (PCT) applications via PCT Safe (or using editable PCT/RO/101 forms.
  • An understanding of domestic and foreign annuities/renewals and patent docket databases, such as IP Manager, Inprotech, and/or CPI are required.
  • Knowledge of the PCT Service Center Online Document Upload, WIPO PatentScope, Espacenet, European Patent Register, and other foreign patent websites a plus.
  • Desire to work in a legal environment and effective time management.
  • Ability to provide direction and training to junior team members.
  • Proficiency in Microsoft Office Suite, PDF creation tool(s), document management software, Intapp or other timekeeping software, and the Internet required.
  • Excellent client service, ability to work overtime, and travel as needed.

 

Benefits

 

The firm offers unsurpassed benefits that include many perks, 22 days PTO, learning, growth, and substantive work