The Patent Paralegal assists attorneys in different practice groups with meeting the duty of disclosure in U.S. and foreign jurisdictions for patent portfolios. This position closely manages the deadlines associated with the duty of disclosure across foreign and U.S. jurisdictions for assigned clients and works collaboratively and effectively with attorneys, clients, and other staff to collect necessary materials and prepare and timely file Information Disclosure Statements and foreign disclosures. The Patent Paralegal may aid with development and documentation of department processes and procedures and assist with training, as needed. The Patent Paralegal will also work on additional patent prosecution related special projects as needed, such as due diligence. The Patent Paralegal operates at a strong level of independence with limited oversight and is an active team member positively contributing to the department and firm. The billable goal for this position is 1200 hours.
QUALIFICATIONS:
- Bachelors’ degree preferred.
- Minimum of three to six (3-6) years of patent prosecution experience in a law firm or professional setting.
- Highly proficient in MS Outlook, Word, and Excel as well as computer and database management skills. Experience with CPi, IPDAS, and general time entry.
- Exceptional oral and written communication skills and the ability to effectively communicate workflow and project updates.
- Strong time management, prioritization, problem-solving, and organizational skills, and the ability to work effectively in a high-pressure environment.
- Excellent organizational skills with meticulous attention to accuracy and detail.
- Possess comprehensive knowledge of legal terminology, rules, regulations, and procedures specific to assigned practice area.
- Strong interpersonal skills and ability to work effectively with difference levels of constituencies.
- Flexibility and capacity to respond calmly, efficiently, and effectively in stressful situations.
- Ability to adhere to established work schedule, but with flexibility required to respond to workload demands including overtime requests when needed.
- Punctual and reliable and able to meet set deadlines and work effectively under pressure.
- Ability to maintain confidentiality of matters and other firm business information.
ESSENTIAL FUNCTIONS:
- Prepares and files Information Disclosure Statements with the United States Patent and Trademark Office (USPTO).
- Prepares disclosures of information for submission with foreign patent offices and coordinate with foreign associates regarding same.
- Reviews Office Actions from U.S. and foreign patent offices for cited references.
- Reviews patent files for prior art before payment of issue fee and upon intake into the firm.
- Effectively organizes references in connection with patent portfolios into prior art databases and routinely maintain these databases.
- Compiles, populates, and maintains electronic archive of prior art.
- Corresponds with clients and works with Firm’s library department to collect materials needed in connection with duty of disclosure.
- Manages attorney and client dockets relating to the duty of disclosure in U.S. and foreign jurisdictions and meet regularly with attorneys regarding same.
- Develops and maintains knowledge of patent office rules and procedures in connection with U.S. and foreign duty of disclosure and other areas of patent prosecution.
- Assists with development and documentation of processes and procedures.
- Assists with training of paralegals as needed by serving as a resource on procedures, patent office rules, and providing some work product review and/or quality control checks.
- Assists with additional patent prosecution related projects on an as-needed basis.
- Meets the department’s 1200 billable hour expectation and adhere to best practice for daily time entry.
- Works with team to collaborate on large projects; actively promotes a positive work environment.
Wolf Greenfield offers a comprehensive benefit package focused on the overall well-being of firm employees. Our benefits include multiple health care plan options, vision and dental insurance, flexible spending accounts/health saving accounts and life insurance. Eligibility for our employer sponsored 401(k) plan includes an employer match and discretionary profit sharing. The firm is invested in our employees development by providing tuition reimbursement and professional development opportunities. Additionally, WGS offers further benefits and perks focused on employee well-being including generous paid time off; including sick time and vacation time, parental leave, commuter benefits, charitable matching gift program, well-being support and much more!
Wolf Greenfield does not offer visa sponsorship. All job openings are subject to export control regulations.
Any offer of employment is subject to the successful completion of a background check. It is unlawful in Massachusetts to require or administer a lie detector test as a condition of employment or continued employment. An employer who violates this law shall be subject to criminal penalties and civil liability.
Pay: $91,500.00 - $98,800.00 per year
Benefits:
- 401(k)
- 401(k) matching
- Dental insurance
- Flexible spending account
- Health insurance
- Health savings account
- Life insurance
- Paid time off
- Parental leave
- Professional development assistance
- Referral program
- Retirement plan
- Tuition reimbursement
- Vision insurance
- Work from home
Experience:
- Preparing and filing Information Disclosure Statements: 3 years (Required)
Work Location: Hybrid remote in Boston, MA 02210
