Patent Prosecution

Please send resume in WORD format should you be interested in the following Patent Prosecution Paralegal position located in Washington DC. This is a full-time, direct-hire position with a salary between 100-110K with OT and awesome benefits. If you are not interested, please forward to your colleagues as we do pay referral fees.

Job Title: Patent Prosecution Paralegal

Location: Washington DC

Salary: 100-110K plus OT

Work Environment: 3 days in office per week

Minimum Billable hour requirement: 1,500/year

Reports to: Director of Paralegal Services (based in NYC)

Job Overview:

Our client is looking to hire a Paralegal to support the Intellectual Property Group with regard to all patent prosecution matters. The Paralegal will be responsive and ensure that all documents received from clients, foreign agents, official US Patent and Trademark Office documents and other government agencies have been responded to timely and accurately under established policies and procedures; and exercises discretion and confidentiality in maintaining contact with clients, attorneys and staff.

This role has a hybrid working arrangement. Potential candidates must live within commuting distance of DC to be onsite 3 days per week. In this role, you will report to the Director of Paralegal Services.

Essential Functions

Monitor and follow-up on foreign patents, including clearing dates and following-up with attorneys, clients, and management to provide adequate time to respond.

Preparing transmittals for and filing U.S. provisional applications and reporting same to internal departments and the client

Preparing and filing U.S. non-provisional applications, including initial, continuation and divisional applications, and reporting same to internal departments and the client

Work with attorneys in keeping abreast of all rules and regulations and procedures for filing foreign/PCT patent applications including all formalities related thereto.

Prepare cost estimates for filing and maintenance of foreign patents.

Maintain an understanding of legalization procedures in city, county, state and country; correspond with government, state and embassy officials; and prepare documents including appropriate fees, when necessary.

Prepare and transmit applications to foreign agents or government agencies, including entry into National Phase.

Prepare and forward official documents to clients and handle appropriate legalization through completion of filing.

Receive and act upon client instructions, including confirmation and/or draft response to client inquiries related to foreign filing and formalities of foreign/PCT applications.

Draft, proofread, photocopy, scan documents into the firm’s document management system and assemble correspondence as needed.

Respond to questions and problems from the staff members and attorneys in relation to foreign/PCT filings including US prosecution.

Maintain a working knowledge of client’s special instructions and prepare appropriate correspondence to clients.

Organize and provide follow-up to meet deadlines by working closely with the attorney and/or client, as assigned to a case.

Work with firm members to assist in the auditing of transfer-in-matters and completion of transfer-out projects, including file and docket review for foreign matters.

Perform other responsibilities as assigned.

Work additional hours as needed to fulfill job requirements.

Skills/Qualifications

5+ years of paralegal experience, specifically with intellectual property law including foreign and US filings, patent docket management and application filings.

Bachelor’s degree, paralegal certification, or equivalent work experience required.

Experience in a legal environment or professional services required.

Thorough knowledge and understanding of international patent matters, including US rules of practice.

Strong understanding of IP to ensure a high quality and accurate work product.

Ability to compose, proofread and edit (e.g., punctuation, grammar, spelling) routine memorandums and correspondence.

Strong communication skills (verbal and written) with the ability to develop positive working relationships (in-person and virtually).

Ability to identify and analyze complex problems to recommend and implement solutions.

Ability to work under pressure while producing a high volume of information with attention to detail while producing an accurate document.

Strong PC knowledge to utilize various online electronic filings with government agencies and to maintain worksheets for clients, including knowledge of MS Excel.

Ability to research and search various websites to locate information to communicate with client or to maintain accurate information in the firm’s various software applications associated with IP matters.

Strong communication skills (verbal and written) with the ability to develop positive working relationships (in-person and virtually).

Meticulous attention to detail and accuracy.

Ability to manage multiple tasks with effective organizational skills.

Proven problem solving, critical thinking, and decision-making skills.

Unquestioned integrity and professionalism.

Proficient in Microsoft Suite (Word, Excel, Outlook, Teams).

Proficient in web-based conference call/web-sharing applications.