Paralegal (Patent Prosecution)

Posted Yesterday
Be an Early Applicant
5 Locations
Hybrid
85K-125K Annually
Senior level
Legal Tech
The Role
Supports patent prosecution matters by managing U.S. and international patent dockets, monitoring deadlines, preparing and filing USPTO and PCT applications and related documents, handling IDS submissions and assignment recordations, reviewing agency correspondence, maintaining electronic files and worksheets, communicating with clients and attorneys, tracking time, and supporting workflow and paralegal training.
Summary Generated by Built In

We are always seeking talented, motivated, growth-minded, and creative individuals. Our firm is committed to providing employee support and advancement, while embracing inclusion and innovation as keys to a stronger future.

We invite you to explore the position below and to submit your application to join our team!

The Paralegal is a member of the Health Care Life Sciences (HCLS) Practice Group and is assigned to specific matters, clients, projects and attorney teams. The Paralegal assists the practice group to function in a consistent productive manner; is responsive and ensures all day-to-day responsibilities are met under established policies and procedures while exercising discretion and confidentiality in maintaining contact with clients, attorneys, and staff.

There is an annual billing component to this role of 1,500 hours.

Essential Duties and Responsibilities: 

  • Ensure policies and procedures are being followed on a day-to-day basis in relation to assigned duties, including client special instructions and in accordance with established firm guidelines.

  • Monitor deadlines associated with the US and international dockets, including providing follow-up with attorneys, clients, and management in order to provide adequate time to respond.

  • Review daily docket reports in accordance with established firm guidelines and correspond with the IP docket department regarding same.

  • Prepare and file patent applications, pre-grant filings and other associated filings with the USPTO and PCT under attorney supervision.

  • Efficiently manage Information Disclosure Statement (IDS) data; prepare and file IDS with the USPTO under attorney supervision. 

  • Prepare and manage the recordation of assignments and name changes in the US and internationally.

  • Working knowledge and effective application of CFR and MPEP is required. 

  • Review and report USPTO and foreign correspondence in a timely manner. 

  • Receive and act upon client instructions, including confirmation and/or draft response to client inquiries related to US, PCT and foreign applications.

  • Utilize USPTO and other related government agency electronic resources effectively.

  • Create and maintain electronic worksheets to assist attorneys in managing client requirements as needed.

  • Maintain the firm’s official file utilizing the document management system.

  • Track and record billable and non-billable time per firm policy.

  • Responsible for maintaining and prioritizing work on a daily basis and communicating if unable to meet daily responsibilities.

  • Demonstrate good teamwork skills within and among practice groups, offices, and firm to facilitate efficient delivery of legal services.

  • May participate in the training and professional development of other paralegals in routine practice elements.

  • Willingness and flexibility to work closely with all attorneys and staff as needed.

  • Provide back-up support to other team members as needed.

  • Manage workflow and effectively communicate with assigned team.

 

Knowledge, Skills, and Abilities:

  • Proficiency with US, PCT and international patent law.

  • Strong interpersonal skills necessary to communicate and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with courtesy and tact.

  • Ability to manage and work independently in a hybrid, and in-office setting.

  • Ability to work effectively both independently and with teams to promote consistent and efficient workflow processes.

  • Ability to work under pressure while producing a high volume of information with attention to detail while producing an accurate work product. 

  • Willingness and ability to accept changing assignments and priorities.

  • Ability to compose, proofread and edit (e.g., punctuation, grammar, spelling) routine memorandums and correspondence.

  • Ability to identify and analyze complex issues and problems and to recommend and implement solutions.

  • Strong working knowledge to utilize various online electronic filings with government agencies and to maintain worksheets for clients. 

  • Proficient in Microsoft Office Products (Word, Excel, Outlook, PowerPoint, Teams, OneNote).

  • Strong organizational and administrative skills.

  • Ability to search various websites to locate information in order to communicate with clients or maintain accurate information in the firm’s various software applications associated with IP.

  • Ability to provide quality client service to both internal and external clients effectively and professionally.

 

Education and/or Experience: 

  • Bachelor’s degree is required; or any combination of specialized training, education and experience that demonstrates the ability to perform the duties of the position.

  • Minimum eight (8) years of progressive patent prosecution experience, including docket management, application filings and prosecution to gain an understanding to provide support and planning that will ensure a high quality and accurate work product.

  • Working knowledge of sequence listings highly preferred.

#LI-Hybrid

The Firm will comply with any applicable city or state workplace mandates in effect in regards to Covid-19. 

This position description is intended to describe the general content of and requirements for the performance of the job.  The statements contained in the position description are not necessarily all-inclusive and additional duties and responsibilities may be assigned as determined by business needs.

This position description does not constitute a written or implied contract of employment.

Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

By applying for this position, you agree and understand that Troutman Pepper Locke will process your Personal Information pursuant to the terms of our Worker and Applicant Global Privacy Notice. If you have questions about our data handling practices, or you are a resident of California, the United Kingdom, or the European Union and wish to exercise your privacy rights, please contact us at [email protected]. 

Equal Employment Opportunity
Troutman Pepper Locke adheres to a policy of equal opportunity and will make all employment decisions, which include hiring, promotion, transfer, demotion, evaluation, compensation and separation, without regard to race, color, religion, sex, age, sexual orientation, gender identity or expression, national origin, pregnancy, citizenship, disability, genetic information, marital or armed forces status and any other classification as protected by law.

Compensation is dependent on several factors, such as position, location, market, education, training, and/or experience.

Hiring Salary Range:

$85,000.00 - $125,000.00

Skills Required

  • Bachelor's degree, or equivalent combination of specialized training, education, and experience
  • Minimum eight years of progressive patent prosecution experience
  • Experience with patent docket management, application filings, and prosecution
  • Working knowledge of U.S., PCT, and international patent law
  • Working knowledge and effective application of CFR and MPEP
  • Proficiency with Microsoft Office products, including Word, Excel, Outlook, PowerPoint, Teams, and OneNote
  • Working knowledge of sequence listings
  • Ability to manage work independently in hybrid and in-office settings
  • Strong organizational, administrative, communication, proofreading, and analytical skills
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The Company
HQ: New York, NY
1,762 Employees
Year Founded: 1890

What We Do

Troutman Pepper is a national law firm with more than 1,200 attorneys strategically located in 23 U.S. cities. The firm’s litigation, transactional, and regulatory practices advise a diverse client base, from start-ups to multinational enterprises. The firm provides sophisticated legal solutions to clients’ most pressing business challenges, with depth across industry sectors, including construction, energy, financial services, health sciences, insurance, private equity, and real estate, among others. See troutman.com for more information. Attorney advertising. #troutmanpepper

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