Patent Paralegal Job Description



The patent paralegal job description below is not a hard and fast rule outlining every facet of this position.

It can't be.

There are always new tasks coming up in the IP enviornment requiring a paralegal's flexibility and willingness to learn.

You find that under the supervision of attorneys the Patent Paralegal provides support for all levels of the patent process relating to a variety of clients. The paralegal operates as part of a team of attorneys and support staff providing a high level of service to both internal and external clients.

Patent Paralegal Job Description Of Essential Duties:


• Review docket for deadlines, understand docket and deadlines and action needed on each file; inform working attorney of deadlines.
• Review all initial emails sent through client extranet; respond and/or upload to Filesite as appropriate.
Assist in filing of U.S. and PCT patent applications, both electronically and paper (including preparation and review of necessary filing documents).
Assist in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding patent certificates.
• Prepare response to Notice to File Missing Parts.
• Process payment of Issue Fees.
• Draft detailed letter to client reporting Office Actions.
• Review files and preparation of Information Disclosure Statement and accompanying documents.
• Effect national phase entry of PCT applications, and prepare and file continuing applications.
Correspond with foreign associates, oversee payment of foreign associates' invoices, and prepare of reporting letters to client.
• Effect portfolio transfers and manage multi-client portfolios.
File and assist in prosecution of design applications (including convention deadlines for filing abroad).
Extensive knowledge of U.S. or PCT patent rules and procedure; knowledge of national laws of other countries; knowledge of Paris Convention and deadlines set therein.
Assist in patent filing strategy discussions and due diligence.
• Track chain of title in U.S. patents and ability to perfect same.

Patent Paralegal Job Description With Knowledge/Skills Required:

Four year degree or paralegal training/certificate required, along with 2-3 years of relevant work experience in a professional environment which includes progressive responsibility in managing patent matters on the prosecution side.
• Knowledge of filing requirements for convention (non-PCT) applications.
• Law firm experience preferred.
• Must have effective written and oral communication skills.
• Ability and willingness to travel as needed.
High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, U.S. Patent Office Electronic Filing System, Dialog and other internet research tools. Previous experience with Filesite and/or Foundation IP (docketing system) is a plus.
• Excellent organizational skills, including the ability to perform well under pressure, manage priorities and meet deadlines.
Reliable and dependable team player; respectful to other individuals working directly or indirectly with them.
• Exercise discretion and maintain confidentiality of client information.
Work independently, taking initiative to move projects to conclusion.

The above sample of a patent paralegal job description offers you a further understanding of what you can expect in this position. This position is for a paralegal or legal assistant with experience that includes progressive responsibility of the patent process.

If working in the patent and intellectual property arena interests you, be sure to take the appropriate course work, get an internship in an IP law office and start getting experience under your belt.

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