Foreign IP Paralegal (Partially Remote)

Job Description

Garrett123

Salary: $85,000 - 105,000/year

This position allows for 2 days per week remote / work from home

RESPONSIBILITIES:

Develops a standard workflow and prioritizes work tasks; becomes proficient in new processes.

Assists in developing foreign filing letters based upon new rules/laws.

Prepares supporting documents for attorneys, including but not limited to, the following:

US and PCT application filing papers, including Declarations, Assignments, and Powers of Attorney;

US prosecution/follow on papers, including Responses to Missing Parts/Corrected Papers, Responses to Office Actions, Petitions, Issue Fee and related/other USPTO forms;

PCT follow on papers, including Responses to Invitations, PCT Powers of Attorney, Notification of Recording of Change, and other related PCT communications;

Prepares instructions to foreign associates for filing national patent applications in various foreign patent offices, and completes all formality requirements;

Prepares US and foreign filing estimates;

Reviews incoming correspondence, including paper and electronic mail, and takes/facilitates necessary action; and,

Works with outside vendors to obtain formal drawings and legalization of documents.

Complies with docket and de-docketing practices.

Manages the docket of US and foreign applications to ensure all dates are accurate and outstanding deadlines are met timely.

QUALIFICATIONS:

Bachelor’s degree preferred

5+ years’ experience as a paralegal in US and foreign intellectual property practice.

Knowledge of procedural requirements for filing US and PCT patent applications with the USPTO and the World Intellectual Property Office (WIPO).

Hands-on electronic filing experience at the USPTO.

Knowledge and expertise of foreign filing and national phase entry procedural requirements.

Proficiency in Microsoft Office.

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