Intellectual Property Patent Paralegal

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Intellectual Property Patent Paralegal

Duties: Works with attorneys in the Department, clients and foreign associates to prosecute and maintain U.S. and foreign patent portfolios. Occasionally works with attorneys in and outside the Department on due diligence, transactional, or special projects. Works closely with attorneys, clients and foreign associates to remind them of deadlines, obtain instructions, and meet filing deadlines. Monitors docket on a daily basis and communicates updates/changes to Docketing. Clears docket in advance of vacation and communicates any issues or alternative arrangements to Docketing and Department Manager. When unexpectedly absent, notifies Docketing and Department Manager of any urgent immediate deadlines. Corresponds with clients regularly to remind them of deadlines, obtain instructions and report progress of application. Communicates with attorneys frequently to share and obtain knowledge about clients and specific matters. Prepares and files PCT applications, Chapter II Demands and foreign national phase applications. Responds to WIPO communications and corresponds with foreign associates to facilitate ongoing prosecution of foreign patent applications. Prepares and files formal papers for each patent application filed adhering to the rules and requirements of the specific country the application was filed in. Reviews U.S. and foreign art cites, compares with information disclosure statements previously filed, coordinates and organizes the citation of prior art across related files. Checks drawings against U.S. specification, orders formal drawings from vendor, proofs formal drawings against specification and instructions given. Reviews patent application file before issue fee is paid making sure all amendments have been entered, references cited in IDSs have been acknowledged by the examiner and made of record. Proofreads issued patents and prepares requests for certificates of correction. Responsible for special projects including but not limited to due diligence, assignment projects, interference proceedings, re-examinations, on-line patent database searches, etc. Maintains daily timekeeping log for billing purposes. Assumes additional responsibilities as assigned. Contributes to the Firm's ServiceMatters initiative to consistently improve its image internally and externally. Displays professionalism, quality service and a "can do" attitude to internal members/departments of the Firm as well as external clients and vendors via electronic and print correspondence, over the telephone and in-person.

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