Remote Patent Paralegal - Contract
Under the supervision of attorneys, the patent paralegal will provide support for all types of patent activities. The paralegal will operate as part of a team of attorneys and support staff to provide a high level of service to both internal and external clients.
 ESSENTIAL JOB FUNCTIONS:

• Review and manage docket for U.S. and foreign deadlines, understand docket and deadlines and action needed on each file

• Assist in patent filing strategy discussions and due diligence

• Assist in filing of U.S. and PCT patent applications, both electronically and paper (including preparation and review of necessary filing documents)

• File and assist in prosecution of design applications (including convention deadlines for filing abroad)

• Assist in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding patent certificates

• Draft detailed letter to client reporting Office Actions

• Prepare response to Notice to File Missing Parts

• Process payment of Issue Fees

• Process post allowance reviews

• Draft preliminary amendments with claim identifiers

• Prepare office action responses

• Effect national phase entry of PCT applications, and prepare and file continuing applications

• Correspond with foreign associates, oversee payment of foreign associates' invoices, and preparation of reporting letters to client

• Review files and prepare Information Disclosure Statement and accompanying documents

• Track chain of title in U.S. patents and ability to perfect same

• Effect portfolio transfers and manage multi-client portfolios

KNOWLEDGE/SKILLS REQUIRED:

• Minimum of five (5) years’ experience as a patent prosecution paralegal or comparable position with experience working in a law firm or in house legal environment

• Minimum of five (5) years’ international prosecution experience

• Knowledge of filing requirements for convention (non-PCT) applications

• Extensive knowledge of U.S. or PCT patent rules and procedure; knowledge of national laws of other countries

• Knowledge of various Courts systems and filing requirements

• Four year degree, or equivalent work experience that demonstrates the ability to perform the duties of the role

• 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

• Ability to travel if needed

• Ability to compose routine correspondence

• Excellent organizational skills and the ability to work independently, prioritize assignments and handle multiple projects simultaneously

• Maintain confidentiality of client information

• Should have ability to work in fast-paced environment

To Apply: Please email your resume to: cfleck@chelsearecruiters.com