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Title : Patent Paralegal

Location : Utah - Salt Lake City
Refer to Job # IUUJ812115

Patent Paralegal Duties: The candidate will maintain and manage heavy U.S. and foreign patent prosecution dockets, including responsibility for ensuring deadlines are met, original correspondence is drafted, and tasks are completed. Prepare documents and review patent related documents, such as correspondence and filings covering all aspects of U.S. and foreign patent prosecution. Coordinate and communicate with clients, draft correspondence, prepare office action response shells, prepare Information Disclosure Statements and prior-art reference management, assignment recordations, inventor declarations, application data sheets, continuing applications, etc. Prepare PCT request forms via ePCT and PCT-SAFE. Handle E-filing of U.S. patent applications, responses to office action, information disclosure statements, formalities responses and e-Petitions through EFS-Web. Handle E-filing PCT applications with WIPO through ePCT and the U.S. Receiving Office through EFS-Web. Handle E-filing PCT-related documents/action through ePCT. Effect national phase entry of PCT applications, and prepare and file continuing applications. Correspond with clients including reporting deadlines, responses as filed, sending reminders, etc. Correspond with foreign associates, oversee payment of foreign associates' invoices and preparation of reporting letters to clients. Perform online research via public access websites, U.S. and foreign patent offices. Organize and maintain electronic client files. Update monthly status reports for select clients. Complete special projects, including assignment, intake, and due diligence projects, as assigned. Perform overall support for all aspects of the U.S. and foreign patent portfolio management and may perform other duties, as needed. Qualifications: The candidate should have Bachelor's degree and/or paralegal certificate or equivalent experience within a patent practice area. Must have 3-5 years of IP patent prosecution experience. Experience conducting searches on databases. Basic knowledge of all aspects of U.S. patent prosecution, including identifying incoming communications from the USPTO and foreign associates and preparation of template responses for same. Proficient with online resources including EFS-Web electronic filing system and PAIR, Global IP Estimator, and at least one docket database (preferably Foundation IP). Excellent oral and written communication skills and demonstrated analytical ability. Ability to set priorities, exercise independent judgment, and initiate projects. Ability to work well under pressure to meet deadlines; responsible; resourceful; professional.

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