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Title : Patent Paralegal

Location : New Jersey - Millburn
Refer to Job # OEFM780669

Patent Paralegal The candidate will assist in the preparation and filing of PCT, national stage, provisional, non-provisional, and trademark applications. Will review and electronic filing of Responses to Office Actions. Prepare documents and coordinate with inventors/clients to obtain executed documents for filing (i.e., Assignments, Oaths/Declarations, and Powers of Attorney). Correspond with foreign counsel and clients on a daily basis regarding formalities documents, prosecution, and renewal (maintenance/annuity) payments. Review, preparation, and filing of prior art and Information Disclosure Statements. Maintain formalities of applications and review applications to ensure formality requirements are met before applications proceed to allowance. Correspond with clients to obtain and e-file Statements of Use (Section 8 & 15 Affidavits). Draft reporting correspondence regarding prosecutorial developments. Prepare dockets and I.P. listings for clients and attorneys. Proofread publications, Letters Patent, Trademark Certificates - prepare and e-file required forms for correcting errors. Review and file documents with the U.S. Federal Circuit via CM/ECF. Utilize USPTO PAIR and TSDR, WIPO, E-Space, and foreign databases to perform routine status checks of patent and trademark applications. Assist in the preparation of trademark clearance searches. Review incoming and outgoing communications to ensure deadlines are docketed accordingly. Maintain client billing. Contact USPTO regarding case status, formality-related issues, and incoming communications. General file and database maintenance. The candidate should preferably have BA/BS degree or Paralegal certificate. Must have organization, attention to detail and time management. Must have excellent written and oral communication skills. Should have working knowledge and experience with the USPTO databases and filing systems, EPO database (e.g. Espacenet), WIPO and E-PCT filing system is a plus. Experience with docketing systems, although not necessary, is a plus. In-depth knowledge of US and foreign patent procedures, rules and requirements is preferred. Must have ability to follow-up as necessary to ensure deadlines are met. Strong proficiency in Microsoft Office and Adobe applications is required.

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