The Patent Paralegal

What does a patent paralegal do?

They ensure deadlines are met and dockets of all matters are current.

However, it's helpful to first define what a patent is to understand its importance.

A patent is an exclusive right officially granted by a government to an inventor to make or sell and invention. There is an official document that sets out the terms of the patent.

Patents are big money.

Individual inventors can retire from patents they successfully file with the Patent Trademark Office. Law offices charge very high fees to protect inventors' ideas.

Whether the law office is filing the patent or prosecuting another party for infringement, they make money.

The patent paralegal significantly impacts the entire process as he or she must pay extreme attention to detail. Missing deadlines in this specialty can prohibit an inventor from getting his patent filed. That’s costly because individuals and businesses need to protect their intellectual property.

A missed deadline could make it impossible for the inventor to recover his rights.

There is a lot of responsibility that comes with being a patent paralegal. It’s a competitive field mainly because it’s a niche specialty. Not all law firms offer this and those that do usually pay their staff very well.

If this is an area of law you like and want to pursue, try to get an internship working for a firm offering this service. Build relationships during your internship so you can put it on your resume.

You’ll be more likely to open doors even with just internship experience in this field.

This specialty typically has the following requirements:

  • Bachelor’s degree in business management or paralegal studies;
  • 2-5 years patent docketing and or prosecution administration experience; and
  • General knowledge of Intellectual Property filing and prosecution rules/regulations.

A job description might include the following duties:

  • Extract relevant information from correspondence and official Patent Trademark Office databases;
  • Enter and track due dates into matter management system and monitor actions due;
  • Review USPTO and outside counsel correspondence, enter new cases and new due dates;
  • Generate docket reports and coordinate with attorneys and staff to meet all due dates satisfied
  • Communicate with USPTO, attorneys, paralegals, liaisons, foreign associates and staff about docketing and prosecution matters;
  • Assist in quality assurance review for patent filings by noting and referring any errors or omissions during docketing to attorneys.

Additionally, major spheres of responsibility include:

  1. Docketing review and analyze incoming mail, docket and update records in IP manager;

  2. Analyze and process incoming and outgoing correspondence;

  3. Enter new U.S. Provisional, Utility, Design, Continuation, CIP, Divisional, Opposition and re-examination files. ;
  4. Investigate and resolve discrepancies related to case particulars or database anomalies;

  5. Discrepancy resolution includes file review with attorneys, outside counsel researching public and private data resources; and

  6. Support the IP docket program, generate daily, weekly monthly dockets.

The patent paralegal is a rewarding career because of it's niche-like nature. Getting into this specialty can be tricky, but once you do, you'll obtain a marketable, in-demand skill set.

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