Patent Paralegal/IP Specialist (Prosecution)

Globally renowned law firm who has been setting the industry standard since its inception, is seeking an experienced Patent Paralegal/Intellectual Property (IP) Specialist for its Washington, D.C. office. The Patent Paralegal/IP Specialist will provide general oversight of filings with the United States Patent & Trademark Office (USPTO) and patent office of foreign countries. Specifically, the Patent Paralegal/IP Specialist will:

  • File new Patent Cooperation Treaty (PCT) applications, national stage applications and direct filed foreign applications.
  • Prepare formal documents, including Declarations, Powers of Attorney, Assignments, and other formal documents as required by foreign countries.
  • File documents in response to Invitations to Correct Defects, Payment of Additional Search Fees, and any other documents received from the World Intellectual Property Organization (WIPO) or the U.S. Receiving Office (RO/US).
  • Review incoming correspondence from WIPO, RO/US and/or foreign associates regarding current status of foreign or PCT applications.
  • Review WIPO, RO/US and foreign country correspondence to ensure accuracy of information, including Official Filing Receipts, Publications, Notifications, Assignments, Acceptances, and Letters Patent documents.
  • Perform research and compile data as requested by attorneys.
  • Review, process and maintain client dockets for filing deadlines, including preparing reminders to attorneys and clients as needed.
  • Assist with miscellaneous client-related projects.

Requirements:

  • 4 years of U.S. and/or Foreign Filing policies and procedures experience, including using and maintaining an IP practice management system in a law firm or IP corporate legal department setting.
  • Ability to prepare and file PCT and foreign patent applications including related formality requirements.
  • Experience with monitoring, maintaining and clearing foreign patent dockets for formality due dates in foreign patent applications.
  • Proficiency with Microsoft Office (e.g. Word and Excel) and billing software(s).
  • Ability to handle multiple projects under limited supervision, meet deadlines and be a strong team player as part of a “High Performance” team.
  • Strong attention to detail, excellent communication (both written and verbal), organizational and interpersonal skills.

For immediate consideration, please submit your resume in MS Word format to resume@point6search.com. Follow us on Facebook | Twitter | LinkedIn | Google+. Visit .6SEARCHPARTNERS for other career opportunities.

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