Intake Patent Paralegal

The Patent Paralegal assists attorneys across various practice groups with intake of new patent files. The paralegal will also be responsible for additional prosecution related projects including but not limited to foreign filing letters, title perfection, IDS preparation and filing. The Patent Paralegal closely manages the deadlines associated with patent prosecution across foreign and U.S. jurisdictions for intake and works collaboratively and effectively with attorneys, clients and other staff to collect necessary materials and triage for entry into our systems.  The Patent Paralegal also works with attorneys, team members and other staff on additional patent prosecution work and other special projects as needed. The billable goal for this position is 1200 hours.   

ESSENTIAL FUNCTIONS:

Intake

  • Coordination with attorney, client and/or prior counsel regarding items needed to complete intake.
  • Management of intakes including preparation of master lists, dashboard maintenance, flagging of urgent files, mapping of patent families, electronic file imports, physical file management, inventorying of files and forwarding of files to IP Services.
  • Troubleshooting missing required items and working with prior counsel, Library and/or foreign associates to obtain necessary information, documents or copies of files.
  • Preparation and filing of customer no. uploads, power of attorney documents for US matters, and 3.73b/c documents.
  • Correspondence with foreign associates regarding transfer of files. 

 Pre-foreign

  • Manage attorney and client dockets relating to foreign filing deadlines to ensure timely notification of Paris Convention deadline.
  • Prepare correspondence associated with assigned clients.

IDS

  • Prepare and file Information Disclosure Statements with the United States Patent and Trademark Office (USPTO.)
  • Prepare disclosures of information for submission with foreign patent offices and coordinate with foreign associates regarding same.
  • Effectively organize references in connection with patent portfolios into prior art databases and routinely maintain these databases.
  • Manage attorney and client dockets relating to the duty of disclosure in U.S. and foreign jurisdictions and meet regularly with attorneys regarding same. 

Additional patent prosecution related projects  

 

  • Title perfection
  • Claims related projects
  • Other prosecution related projects as needed
     

QUALIFICATIONS:

  • A minimum of three to six (3-6) years of role-specific experience and a background in US and foreign patent prosecution. 
  • Demonstrated proficiency in WGS tools, processes, and procedures. 
  • Excellent oral and written communication skills and the ability to effectively communicate work flow and project updates.  
  • Excellent time management, prioritization, problem-solving, and organizational skills and the ability to work effectively in a high pressure environment. 
  • Knowledge of legal terminology, rules, regulations, and procedures specific to practice area.
  • Excellent interpersonal skills and ability to work effectively with difference levels of constituencies. 
  • Very flexible and capacity to respond calmly, efficiently, and effectively in stressful situations.
  • Punctual and reliable and able to meet set deadlines and work effectively under pressure.  
  • Ability to maintain confidentiality of matters and other firm business information.

     

    Location: Boston, MA or New York, NY

    To apply for this position, please click here. 

    Physical Demands: The firm will strive to provide reasonable accommodations, as requested, to enable an employee with a disability to successfully perform this position in our office setting.  Frequent communication is an essential aspect of this position and employees must be able to exchange timely and accurate information in a variety of situations. This position may also encompass maintaining a stationary position for long periods of time (at least up to 50% of the workday) with occasional movement, as well as lifting and/or moving objects that weigh up to 25 pounds.  Other essential functions may apply and employees working remotely have the same or similar requirements. 

    Work Environment: The office work environment of the firm is characteristic of the environment the job holder will encounter. In this typical office setting, an employee will encounter standard office equipment and any noise associated with that equipment. The noise level is usually quiet to moderate.  The office setting of Wolf Greenfield requires the ability to manage multiple work priorities along with frequent interruptions.