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 the United States, including arranging to pay bills from foreign counsel and vendors.
  • Review the Notice of Allowance before payment of issue fees.
  • Assist in preparing 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 the docket and ensure accuracy.

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.

in Dallas, TX