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

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