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Patent Paralegal

Job Description

This position will report to the Patent Administrator and will be based in our Sunnyvale, California office. We are seeking an experienced Patent Paralegal to join our fast-paced, growing patent department. The candidate must have a Bachelor’s degree and 5+ years’ work experience in both domestic and foreign intellectual property in a mid/large law firm setting.

Responsibilities

The candidate should have strong writing ability and exceptional communication skills to sustain close working relationships with internal attorneys and colleagues, as well as outside counsel attorneys/paralegals/staff. Must have knowledge of USPTO rules and procedures and a strong understanding of foreign patent prosecution procedures. Knowledge of filing requirements for both US and PCT applications is required. Working knowledge of Microsoft Office Suite, including MS Word, Outlook, and Excel is needed. Proficiency using a patent docket management system is required, FoundationIP experience is a plus. The ability to handle last minute special projects and possibly late night USPTO filings is required. A level of comfort with ambiguity and shifting priorities with flexibility is strongly desired.

Qualifications

Must have both US and foreign docketing experience (experience with FoundationIP a plus), be able to enter and track due dates into docket management system, update status comments, monitor actions due and generate docket reports.

Must have 5+ years experience as a patent prosecution paralegal directly handling a large patent portfolio’s prosecution tasks such as: preparing filing paperwork for both US/PCT patent applications to include new provisional/utility/PCT applications, missing parts responses, etc.; experience filing new applications and follow on correspondence with the USPTO via EFSWeb/EPAS, etc.

Weekly docket reviews to coordinate workflow/due dates with Patent Administrator/Patent Attorneys to ensure all due dates are met.

Communicate with USPTO, attorneys, paralegals, patent agents/engineers, foreign associates and staff regarding docketing and prosecution matters.

Assist in quality assurance review for patent filings by noting and referring any errors or omissions to patent attorneys/agents/engineers.

Must be detail oriented.

Must have in-depth knowledge of patent filing rules/regulations across multiple filing jurisdictions.

Investigate and resolve discrepancies related to case particulars or database anomalies. Must be able to extract relevant information from correspondence and official Patent Office databases worldwide.

Prefer mid to large law firm and in-house experience.

Education

• Bachelor’s degree and minimum 5 years experience.

Additional Information