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Title : IP Paralegal, Design Patent Prosecution Department

Location : Illinois - Chicago
Refer to Job # GBKC734393

IP Paralegal, Design Patent Prosecution Department The candidate is responsible to assist attorneys with the preparation, filing, and prosecution of design patent applications in US and non-US jurisdictions, which includes: Preparing for client conferences. Receiving, evaluating, and photographing (as needed) CAD files or prototypes prior to preparation of formal drawings. Corresponding with clients and vendors, including third party illustrators and searchers. Preparing draft Response to Office Actions and conducting post allowance review work. Corresponding with associates in non-US jurisdictions regarding the filing and prosecution of non-US design patent applications. Assist attorneys with management of clients' design patent portfolios: Assembling data from various resources and creating client portfolio reports. Monitoring the status of client portfolios and actively addressing actionable items. Attending to client inquiries related to client portfolios. Assist department managers with: Developing department and client procedures, templates, and trainings. Mentoring and reviewing work product for peers. Contributing to processes that enhance growth and efficiency of the department. Conduct clearance and patentability searches. Other duties and special projects as assigned. The candidate must have at least 3 years of patent prosecution experience or 2 years of design patent prosecution experience. Experience conducting business with the USPTO, including the submission of documents, requesting certified documents, and troubleshooting of application related inquires is needed. Experience independently maintaining an accurate docket and proactively addressing deadlines is required. Familiarity with Convention and Non-Convention US and non-US prosecution and formality requirements, in particular, experience preparing and reviewing draft application materials (e.g., ADS, specifications, formal drawings, transmittals, IDS, etc.) is must. Demonstrable knowledge and understanding of USPTO rules and practices, including M.P.E.P. Chapter 1500, e-Office Action, use of public/private PAIR and other online USPTO resources is essential. Proficiency with Microsoft Office, especially Microsoft Excel and Word (i.e., ability to work with spreadsheets and quantitative data, etc.) is critical. Experience providing training and reviewing work product of peers is necessary.

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