Job Description
Responsibilities:
U.S. Patent Prosecution
- Assist with the preparation of patent application requisite documents including transmittal forms, assignments, information disclosure statements, declarations forms and all other related forms. Complete electronic filing of patent applications including provisional, non-provisional and design patents
- Assist with prosecution of patent applications including drafting of Office Action “shell” response and Preliminary Amendments and filing of responses with the United States Patent and Trademark Office. Manage client documents for execution including power of attorney forms and assignment forms
- Review and manage docket deadlines. Complete related status checks
- Manage timely payment of maintenance fees for patents. Correspond with foreign counsel regarding new patent filings and related prosecution deadlines
- Prepare reporting letters to client and contact with clients as needed
- Prepare and file Information Disclosure Statements
Foreign Patent Prosecution
- Knowledge of PCT Rules and Regulations
- Prepare and file Patent Cooperation Treaty (PCT) applications. Manage and draft related documents in support of patent application as needed including Correction to Defects and Recording Changes to application. Review Search Reports, Examination Reports and Written Opinions.
- Correspond with foreign counsel regarding new patent filings and related prosecution deadlines
- Manage timely payment of maintenance fees and annuity payments for foreign patents and patent applications
- Review and manage docket deadlines. Complete related status checks
- Prepare reporting letters to client and communicate with clients as needed
Due Diligence
- Conduct database searches for patent, assignment, and security lien status
- Assist transaction teams with searches
Client Relations
- Respond to various client requests
- Prepare and maintain patent status charts
- Maintain close direct client relationship
Requirements
- Bachelor’s degree; paralegal certificate from an ABA-approved school preferred
- Approximately 5-10 years of patent prosecution experience in a mid- to large-size law firm
- Proficient in Excel, PowerPoint, Word, and Adobe
- Strong, concise communication and written skills
- Able to work overtime, including weekends, sometimes as needed, without notice
- Some travel may be necessary
- Able to lift boxes that weigh up to 20 lbs.; able to sit or stand for long periods of time
Job Type: Full-time
Pay: $95,000.00 - $120,000.00 per year
Benefits:
- 401(k)
- Dental insurance
- Flexible schedule
- Health insurance
- Paid time off
- Tuition reimbursement
- Vision insurance
Schedule:
- Monday to Friday
- Weekend availability
Ability to commute/relocate:
- Wilmington, DE: Reliably commute or planning to relocate before starting work (Required)
Work Location: One location