Intellectual Property Paralegal - NYC, NY

The Patent Paralegal has experience in complex U.S. and foreign patent laws and patent prosecution procedures; interacts directly with attorneys, clients, and foreign associates to prosecute and maintain U.S. and foreign patent portfolios; and assists with the diligence process for transactional case teams. The Patent Paralegal works effectively and collaboratively with attorneys and staff across offices, and functions in a lead capacity, with a high degree of autonomy, to incorporate matter management best practices to set and complete objectives; proactively manages and follows through on timelines/deadlines; effectively handles competing priorities; identifies and implements process efficiencies; and produces high quality work product with an emphasis on attention to detail, accuracy, and timeliness.

PRINCIPAL DUTIES AND RESPONSIBILITIES*

Matter Management and Business Acumen

• Takes initiative and demonstrates knowledge and proficiency to clearly organize, plan, and prepare for projects; sets objectives, creates timelines, and utilizes keen judgment to strategically problem-solve/manage change; actively participates in open and professional discussions about concerns or creative ideas during project development and execution; proactively follows-through and manages deadlines; approaches each task/assignment in a solution-oriented, critical, and innovative manner, leading to the best decision for the client and the firm.

 Patent Prosecution Practice

• Prepares and files formality documents, information disclosure statements; completes post-allowance review of applications prior to payment of issue fee to ensure that all necessary documents have been filed, all fees have been paid, all amendments have been entered, and all references cited in IDSs have been acknowledged; prepares and files responses to missing parts notices and issue fee payments; calculates patent term adjustment and files certificates of correction.
• Generates U.S. and foreign application cost estimates using Global IP Estimator; coordinates the preparation of sequence listings; prepares and files PCT applications; engages with foreign associates to file direct foreign and national phase applications; corresponds with foreign associates throughout prosecution regarding application requirements and deadlines.
• Reports U.S. actions and foreign correspondence to clients.
• Assists with record cite checking in post-grant proceedings matters.

Docket and Team Management

• Monitors docket on a daily basis and communicates updates/changes to Docketing and case team; compares docketing database entries with new actions/correspondence; facilitates regularly scheduled team meetings to review client dockets; works closely with and corresponds with attorneys, clients, and foreign associates to remind them of deadlines, obtain instructions, meet filing deadlines, and report progress of application; maintenance of digital files.

Leadership/Staff Development

• Provides guidance and supervision to junior team members/other staff; assigns work clearly and in context, and manages deadlines for junior team members; sets expectations and communicates confidently and effectively; manages overall deadlines; performs effectively under pressure; effectively delivers constructive feedback and mentors junior team members to promote development; shares team successes with others; develops and maintains positive, constructive, and collaborative relationships with other firm departments.

Training and Development

• Attends and participates in professional development programs, including firm, department and paralegal meetings and training; actively mentors junior team members; demonstrates an awareness of department and position purpose within the firm and applies knowledge appropriately to role and daily responsibilities; keeps up with current developments/industry trends in areas of expertise.

Client Service

• Demonstrates effective client service by making both internal and external clients and their needs a primary focus of his/her actions; develops and sustains productive client relationships; builds collaborative relationships and takes action to meet needs and concerns; displays professionalism, quality service, and a "can do" attitude to both internal members/departments of the Firm and external clients and vendors.

Timekeeping

• Consistently meets the Firm’s billable hours expectations; adheres to best practices for daily time entry for client work and MyADP for attendance and time off requests.

Assumes additional responsibilities as assigned.

• Ability to fulfill the duties and responsibilities of a Patent Paralegal assigned to complex patent intellectual property matters involving the United States Patent and Trademark Office, the World Intellectual Property Organization, or other governmental/private entities.
• Knowledge and proficiency in U.S. and foreign patent laws and U.S. and foreign patent prosecution filing procedures.
• Knowledge of and ability to effectively use online research databases and the internet, including state, federal, and foreign government websites.
• Ability to work effectively, both independently and collaboratively as part of a team; shows commitment to the team, the client, and the firm by participating willingly and reliably; shares ideas, expertise, and information, and works with colleagues in a manner that inspires cooperation, builds trust and respect, and maximizes efficiency and team success.
• Ability to communicate effectively and clearly, both orally and in writing, with attorneys, clients, peers, vendors, and other firm members, and ensure communications are timely and appropriate; to listen and accurately interpret others' expectations, ideas, and concerns; to raise questions professionally and purposefully; to seek and be open to constructive feedback.
• Exacting attention to detail; excellent analytical and organizational skills
• Strong technology skills, including document management platforms (e.g., iManage, OneDrive), and Microsoft Office applications (Word, Excel, PowerPoint) and Adobe
• Ability to travel and work overtime.

Education:

• BA/BS preferred.

Experience:

• Five years of related experience in a law firm preferred.