Job Details

Below is detailed information about the job you selected.

Title : Patent Paralegal

Location : California - Calabasas
Refer to Job # VAWQ727597

Patent Paralegal Duties: Reports to office manager; works under direction of attorneys. Under minimal supervision, assist patent attorneys on all levels of patent prosecution. Provide organized and substantive support to attorneys in relation to all aspects of the Information Disclosure Statement (IDS) and prior art monitoring process as well as general client projects. Ensures client service and satisfaction are attained in all relevant areas of the position. Establish/maintain prior art management and Information Disclosure Statement (IDS) procedures. Prepare/maintain manual for IDS procedures, forms, database templates, etc. Prepare specialized prior art client databases for monitoring all prior art and prepare electronic reference libraries for use in preparation of IDS filing and submission. Train junior and mid-level paralegals relating to IDS preparation/submission and other paralegal tasks. Review all outgoing IDS draft documents for accuracy prior to filing/submission to the USPTO. Review all incoming firm correspondence for prior art references and update prior art databases/IDS acknowledgment tracking charts accordingly. Docket/manage all IDS actions and provide summaries of outstanding issues regarding prior art references to attorneys. Prepare customized client budgets, portfolio reports, statistics, summaries, etc.; per client request or as scheduled. Assist with due diligence pertaining to patent matters, prepare supporting documentation and create data rooms for access by clients and/or third parties (including status, chain of title, third party and/or competitor patent portfolio reports, patent family trees, etc.). Review patent license agreements/IP schedules and provide updated schedules, status reports, etc. to licensee/licensor. Prepare complex patent family trees (for client patent portfolios and/or third party patent portfolios). Perform/prepare searches utilizing worldwide patent data (USPTO, WIPO, Espacenet, Lexis/Nexis, Thomson Innovation and various foreign patent office websites). Prepare patent claim charts per attorney or client request (for both client portfolios or search/investigation results). Monitor third party or licensed patent applications and provide status reports/updates to attorneys on a quarterly basis. Process, format and e-file patent prosecution documents via USPTO-EFS. Assist with special projects per attorney or client request. Qualifications: Paralegal certificate preferred. 5-10 years of experience as a patent prosecution paralegal required. Previous experience in an IP law firm. High proficiency in Excel a must. Experience with EFS and PAIR required. Extensive US and foreign patent prosecution experience including experience with patent-related databases. Strong oral/written communication and analytical skills are needed. Ability to prioritize work and manage time with the flexibility to work required hours in order to meet deadlines is essential. Must have the ability to take direction, follow through and work both independently and as a team. Experience with First to File and Foundation IP a plus. Must have a solid understanding of US Patent Office forms, rules and procedures. Strong positive attitude. Exceptional attention to detail. Extreme multitasking aptitude. Ability to perform well under pressure. Proficiency with various types of Windows applications. Excellent sense of teamwork. Strong computer knowledge. Docketing experience a plus.

Email: jobs@lawfirmstaff.com NO CALLS PLEASE

This particular job is currently not active. However, since our clients regularly share with us similar and other job openings, we strongly recommend that you submit your resume. We shall review your resume and get in touch with you as soon as a suitable vacancy comes up to further discuss your interest in exploring the opportunity. Assisting you is our highest priority.

Please be assured that none of your materials will be forwarded to any employer without your consent. Of course, all inquiries are kept strictly confidential.