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Patent Prosecution Paralegal (IP&T)

Company:
DFM & Associates
Location:
Dallas, TX, 75215
Posted:
May 09, 2024
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Description:

Global law firm is seeking a full-time Patent Prosecution Paralegal for their Dallas office. This position will support the Dallas Intellectual Property & Technology (IP&T) Practitioners and the national IP&T Practice Group! This position will report to the Practice Group Leader, with daily work performed primarily under the direction of assigned practice group lawyers and/or paraprofessionals.

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 in connection with prosecution and maintenance of patent applications outside of the United States, including arranging for payment of bills from foreign counsel and vendors

Review the Notice of Allowance prior to payment of issue fees

Assist in preparation of 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 docket and ensure it is accurate

Other duties as assigned to meet the minimum billable hour and performance based requirements for this position

Position Qualifications:

Bachelor's or Associates Degree required or Paralegal Certificate and equivalent experience

Minimum of 5 years’ experience required providing exceptionally high-quality service

Applicant must have a solid understanding of both 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

Must have superior communication skills and be able to work in a team environment

Must have the ability to interact and work productively with all levels of firm staff

Professional demeanor, attention to detail, and great organizational skills are essential

Strong verbal, written, analytical, organizational and interpersonal skills

Strong problem resolution abilities appropriately combining logic, analysis, and follow-through

Ability to provide direction and training to junior team members

Ability to maintain discretion and privacy with confidential matters and documents

Ability to recognize and comprehend facts and legal concepts

Ability to meet minimum billable hourly requirement

Proficiency in Microsoft Office Suite, PDF creation tool(s), document management software, Intapp or other timekeeping software, Internet required

Excellent client service, ability to work overtime and travel as needed.

The firm offers a competitive salary and benefits package including medical, dental, vision, 401(k), profit sharing, STD/LTD, life insurance, tuition reimbursement, PTO, paid holidays and discretionary bonuses!

This is a hybrid position working in the office 3 days a week and 2 remote!

Salary: $90,000-$115,000.00

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