Role Description

Under the supervision of attorneys, the patent paralegal will provide support for all types of patent activities. The paralegal will operate as part of a team of attorneys and support staff to provide a high level of service to both internal and external clients.

Essential Job Functions:

• Review and manage docket for U.S. and foreign deadlines, understand docket and deadlines and action needed on each file.
• Assist in patent filing strategy discussions and due diligence.
• Assist in filing of U.S. and PCT patent applications, both electronically and paper (including preparation and review of necessary filing documents).
• File and assist in prosecution of design applications (including convention deadlines for filing abroad).
• Assist in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding patent certificates.
• Draft detailed letter to client reporting Office Actions.
• Prepare response to Notice to File Missing Parts.
• Process payment of Issue Fees.
• Process post allowance reviews.
• Draft preliminary amendments with claim identifiers.
• Prepare office action responses.
• Effect national phase entry of PCT applications, and prepare and file continuing applications.
• Correspond with foreign associates, oversee payment of foreign associates' invoices, and preparation of reporting letters to client.
• Review files and prepare Information Disclosure Statement and accompanying documents.
• Track chain of title in U.S. patents and ability to perfect same.
• Effect portfolio transfers and manage multi-client portfolios.

Qualifications

• Minimum of five (5) years’ experience as a patent prosecution paralegal or comparable position with experience working in a law firm or in-house legal environment.
• Minimum of five (5) years’ international prosecution experience.
• Knowledge of filing requirements for convention (non-PCT) applications.
• Extensive knowledge of U.S. or PCT patent rules and procedure; knowledge of national laws of other countries.
• Knowledge of various Courts systems and filing requirements.
• Four year degree, or equivalent work experience that demonstrates the ability to perform the duties of the role.
• High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, U.S. Patent Office Electronic Filing System, Dialog, and other internet research tools.
• Ability to travel if needed.
• Ability to compose routine correspondence.
• Excellent organizational skills and the ability to work independently, prioritize assignments and handle multiple projects simultaneously.
• Maintain confidentiality of client information.
• Should have ability to work in fast-paced environment.

To Apply:

Please email your resume to: cfleck@chelsearecruiters.com

Craig Fleck
Vice President
Chelsea Search Group
1777 Laurelwood Way
Oceanside, CA 92056
858-829-7747
cfleck@chelsearecruiters.com
www.chelsearecruiters.com