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Location : Ohio - Dayton
Refer to Job # TKMM847205
This Midwest firm manages its practice groups efficiently and matter-of-factly. Solid and steady work help solidify this firm as a reliable player in the smaller law firm market. Associates can expect good training, including more hands-on work than in other firms offering similar levels of sophistication in the practice. Associates will be pleasantly surprised by the sophistication of this small firm, combined with a warm collegial environment.
Intellectual Property Paralegal The candidate will prepare and electronically file documents pertaining to US and PCT patent applications, including electronically filing US applications, responses to office actions, appeal briefs, international (PCT) applications, PCT amendments, and preparing documents and other filings related thereto. Prepare foreign filing estimates, preparing documents and instructions to agents for PCT national phase filings, overseeing domestic and foreign patent prosecution matters from filing through grant (including payment of annuity and maintenance fees), and prepare status and docket reports for clients. File patent applications, responses to office actions, appeal briefs, international (PCT) applications, PCT amendments, and other formal papers, and prepare and file all transmittals, cover sheets, application data sheets, assignments, declarations, information disclosure statements, recordation of assignments, name changes, correspondence address forms, and other application components and particulars, as applicable, in each case in connection with domestic and foreign patent applications. Proficiently and effectively utilize USPTO and other government agency electronic filing systems, databases, and other online resources. Assemble patent and non-patent literature, including from any counterpart applications, for information disclosure statements. Coordinate with clients to obtain any further materials and information for such disclosure purposes. Address the various filing formalities and procedures of patent offices throughout the world. Contact clients to obtain documents and information, as needed, to prepare, file and prosecute patent applications. Complete Notice of Allowance checklist, due diligence, and payment of issue fee. Manage, coordinate, and prepare filing particulars for maintenance and annuity fee payments for domestic and foreign patent applications. Review and report correspondence received from U.S. and foreign patent offices. Review and report upon client instructions, including preparing drafts of communications responsive to client instructions or inquiries related to domestic and foreign applications. Ensure that all documents received from clients, foreign agents, USPTO and other government agencies have been responded to timely and accurately. Manage patent docket for assigned supervisory patent attorneys to ensure all deadlines and actions are addressed in a timely fashion. Create and forward formal documents to the client within a certain schedule to reduce a back-log of work. Coordinate intake and opening of new domestic and foreign patent prosecution matters. Monitor and follow-up on dates associated with US and foreign dockets, including clearing dates and providing follow-up with attorneys, clients and management in order to provide adequate time to respond. Clear daily docket reports in accordance with established firm guidelines and notify docket department of any inaccuracies. Proofread, photocopy, scan documents into the firm's document management system. Create and maintain electronic worksheets to assist attorney in managing client needs. Maintain and prioritize work on a daily basis and communicate if unable to meet daily responsibilities. Track and record client-billable time as required to meet minimum billable requirements. Provide back-up support to other team members as needed. Willingness and flexibility to work closely with all other departments as needed. Work with attorneys to keep abreast of all rules and regulations and procedures for filing US and PCT applications, including all formalities related thereto. Perform special projects, as assigned. Ensure that all other day-to-day responsibilities are being met under established policies and procedures. Four-year college degree (waived for paralegals with appropriate experience) is required. Degree in Paralegal Studies or paralegal certificate is preferred. Should preferably have 8-10 years of combined comprehensive domestic and foreign patent prosecution experience, including docket management and in-depth knowledge of patent filing and prosecution practices in the USPTO, PCT, and other major jurisdictions worldwide.
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