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IP Paralegal

Boston, MA, USA

Job Type

Full Time

About the Role

The IP Paralegal will assist with the preparation of US and foreign  documents for filing in respective patent offices, prepare follow-on  prosecution documents, track and communicate deadlines, perform relevant  on-line searches, prepare cost estimates, and review intake of daily  correspondence to determine what needs to be communicated to the client.


This position is a full-time, non-exempt position in the Boston  office. The regular hours will be 9:00 a.m. to 5:00 p.m., Monday through  Friday, offering the flexibility to work remotely two days a  week. In addition, straight time is paid for hours worked in excess of  35 to 40 in the work week. Overtime is in effect after the completion of  40 hours in the workweek. From time to time, it may be necessary for  the IP Paralegal to work additional hours or change their hours to  ensure all coverage and/or deadlines are met.

Duties and Requirements

  • Develops a standard workflow and prioritizes work tasks; becomes proficient in new processes.

  • Assists in developing foreign filing letters based upon new rules/laws.

  • Prepares supporting documents for attorneys, including but not limited to, the following:

  • US and PCT application filing papers, including Declarations, Assignments, and Powers of Attorney;

  • US  prosecution/follow on papers, including Responses to Missing  Parts/Corrected Papers, Responses to Office Actions, Petitions, Issue  Fee and related/other USPTO forms;

  • PCT follow on papers,  including Responses to Invitations, PCT Powers of Attorney, Notification  of Recording of Change, and other related PCT communications;

  • Prepares  instructions to foreign associates for filing national patent  applications in various foreign patent offices, and completes all  formality requirements;

  • Prepares US and foreign filing estimates;

  • Reviews incoming correspondence, including paper and electronic mail, and takes/facilitates necessary action; and,

  • Works with outside vendors to obtain formal drawings and legalization of documents.

  • Complies with docket and de-docketing practices.

  • Manages the docket of US and foreign applications to ensure all dates are accurate and outstanding deadlines are met timely.

  • Assumes additional responsibilities as assigned.


QUALIFICATIONS:

  • Bachelor’s degree preferred

  • 2-3 years’ experience as a paralegal in US and foreign intellectual property practice.


ADDITIONAL SKILLS/EXPERIENCE:

  • Knowledge of procedural  requirements for filing US and PCT patent applications with the USPTO  and the World Intellectual Property Office (WIPO).

  • Hands-on electronic filing experience at the USPTO.

  • Knowledge of foreign filing and national phase entry procedural requirements.

  • Proficiency in Microsoft Office

  • Excellent grammar, spelling and proofing for content and context.

  • Excellent interpersonal skills, including strong communication skills,  tact and diplomacy, as well as the ability to interact positively and  productively with all levels of the Firm.

  • Ability to assume  responsibility for assigned tasks, and if necessary, able to delegate  workload in order to manage multiple tasks and meet deadlines.

  • Demonstrates organization, flexibility, and reliability to set  priorities, as well as the ability to manage multiple responsibilities  and works well under pressure.

  • Detail-orientated and self-motivated.

  • Ability to work both independently and collaboratively with team members as well as attorneys and staff throughout the firm.

  • Adaptable to last minute changes and disruptions, and able to accommodate occasional overtime work when required.

Salary

$75,000.00 - $90,000.00 per year

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