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