Patent Prosecution Paralegal

Job Description

ESSENTIAL JOB FUNCTIONS:

• Prepares supporting documents for attorneys including, but not limited to, the following:
  • US and PCT application filing papers
  • US formal documents, including Declarations, Assignments, and Powers of Attorney
  • US prosecution papers, including Information Disclosure Statements, SB08s, Responses to Missing Parts, Responses to Office Actions, Petitions, Issue Fee papers, and other USPTO forms
  • Routine foreign prosecution documents such as PCT and direct national patent application filing papers, Authorization of Agents, Priority Documents, Assignments, and all other foreign formalities forms
  • Reporting, reminder and instruction correspondence to clients
  • Instruction correspondence to foreign associates
  • Patent Status Charts
• Contacts USPTO, WIPO and foreign associates regarding status of applications.
• Works with Docketing Paralegal and attorneys and agents on managing the dockets and advising of deadlines; prepares and distributes docket or other status reports as directed.
• Reviews and organizes patent documents and files; ensures emails and documents are properly filed in iManage according to filing protocols.
• Coordinates Sequence Listings, Formal Drawings and Legalization of Documents with outside vendors.
• Works with supervisor and other patent staff on forms, prosecution manual, or other processes associated with Patent Practice Management.
• Performs special projects as assigned, particularly IP Due Diligence projects.
• Records time for billing and statistical purposes.

Performs any and all other duties as necessary and as assigned by your supervisor for efficient functioning of the Department, Office, and Firm.

INTERACTIONS AND CHALLENGES:

This role works with a team of patent paralegals and secretaries to provide support for patent prosecution attorneys and agents located in Boston; may also be asked to support patent attorneys and agents in New York and Silicon Valley. The paralegal will work regularly with other Dechert Departments such as Word Processing, Information Technology, Mailroom and Duplicating. The paralegal will need to think critically to regularly determine work priorities based upon Firm and Department standards.

Additional Job Description

QUALIFICATIONS / KSAs:

• Bachelors degree or paralegal certificate
• 7+ years of US and foreign patent experience; knowledge of US and foreign countries deadlines
• Friendly, team-oriented demeanor; ability to collaborate and support attorneys cross-office
• Ability to work independently in a fast-paced environment
• Proficient in Outlook, Word, Excel, PowerPoint, iManage, CPI, USPTO PAIR, EFS and EPAS
• Ability to work overtime when required
• Ability to learn new technical skills as they become necessary

Location(s)

Time Type

Dechert LLP is committed to ensuring equal employment opportunity and non-discrimination. The Firm prohibits unlawful discrimination in any term or condition of employment against any employee or applicant for employment because of the individuals race, color, creed, religion, sex, age, marital status, national origin, ancestry, citizenship, sexual orientation, gender identity or expression, genetic information, disability, membership or service in the armed forces, or any other characteristic protected by law.