IP Paralegal – Small Corporation – Preferred Salt Lake City, Utah (or Remote)

clairvolexClairvolex Inc. is seeking a paralegal who will be primarily responsible for US patent paralegal functions for one or more customers. Quality control and direct, hands-on supervision of paralegal and administrative processes connected with filing and prosecuting patent applications until grant and post-grant maintenance of issued patents are key responsibilities. The candidate is expected to function as a mentor and a subject matter expert (SME) for a large team in the IPMS (Intellectual Property Management Solutions) business unit in India.

The role requires the candidate to have first-hand knowledge of patent prosecution at the USPTO, European Patent Office, though the PCT system of WIPO and other main national IP offices.

Acting as the primary customer contact for US based clients relative to paralegal, docketing and admin related projects will be an important aspect of this role. Client relationship management (CRM), in general, and oversight and management of billing and other administrative functions connected with CRM are functions the candidate will be expected to perform.

Job Responsibilities
Paralegal will be responsible for the following:

  • a) 100% compliance of docket deadlines for one or more customers in relation to their patent applications portfolio.
  • b) Coordinating patent prosecution matters with the Paralegal Manager and the office of the Chief IP officer, Outside Counsels and in-house paralegals of the customers.
  • c) Overseeing paralegal, docketing and admin functions of IPMS team relative to the customers for which the senior paralegal is responsible for.
  • d) Subject matter oversight and supervision on matters concerning IDSes at the USPTO, first and supplementary IDSs, Citation Matrix, online IDS filing, patent watch, post allowance review, issued patent proofreading and such other paralegal and admin functions.
  • e) Import training on paralegal functions to the team in India.
  • f) Quality control of the work-products generated by the IPMS team, in general, and in particular in relation to the Customers for which the Senior Paralegal/Paralegal Manager has primary responsibility.
  • g) Train, coach and mentor un-trained or trainee paralegals and docketers.
  • h) Offer technical support, subject matter expertise, and solutioning support to sales and business development team
  • i) When required travel to client facilities for on-site reviews
  • j) When required attend potential customer presentations
  • k) Manage any special projects that Paralegal Manager or Clex Associate Vice President will require from time to time.
  • l) Attend client sales and marketing meetings, internal sales meetings, Clex strategy meetings when asked
  • m) Develop training materials and offer training to Clairvolex employees in relation to US paralegal functions
  • n) Participate in process building, process innovation, automation and similar activities directed at organization development.
  • o) Help in establishing the Clairvolex brand globally, may be asked to attend conferences, networking events, road-shows and also carry out regular visits to various potential and existing client facilities.
  • p) Provide every possible sales and marketing support including by offering online presentations, attending conference calls to render presentations on service lines and related processes, making client specific proposals, and obtaining client references (if and when specifically required).

Other Details:

  • Educational/professional qualifications: US Patent Paralegal. Should be qualified to function as a paralegal in the United States. Must possess a degree from a US university. Formal paralegal training is an added advantage.
  • Experience: Not less than 8 years as a paralegal at a US IP law firm, or the patent prosecution practice of a GP firm or at an in-house patent operation. Should have handled a large volume of patent preparation and prosecution matters.
  • Compensation: Commensurate to industry/law firm standards in the United States.
  • Position: Paralegal
  • Position open as on date.
  • Reports to: Paralegal Manager
  • Reported by: The role may have functional reporting by members of the IPMS team in India.
  • Compensation: Commensurate with US industry standards. Standard benefits as per Company policy.
  • Employer: Clairvolex
  • Business Domain: Intellectual Property Services and Solutions

To apply, email Prerna Jain at: prerna.jain@clairvolex.com. Please include a brief note on your Paralegal & Docketing experience.

Additional Info
Employer Type: Small Corporation
Job Location: Preferred Salt Lake City, Utah (or can be based anywhere in the U.S.)