Intellectual Property Paralegal – Corporation – Anderson, SC

September 24, 2024- US - MidAtlantic and South, Emp - Corporate (in-house), Work - Paralegal / Legal Secretary

TTI Consumer Power Tools, Inc. has an opening in its growing Anderson, SC headquarters for an IP Paralegal. This individual would report to the Director of IP & Assistant General Counsel and provide professional and administrative support to the organization's Intellectual Property and Legal Departments. This position is hybrid and would require 2-3 days on-site at the Anderson campus.

Job Summary & Responsibilities:

Provide legal and administrative support to TTI’s patent attorneys, including:
- managing and maintaining electronic files relating to patent procurement, freedom to operate investigations, and patent controversies and litigation;
- conducting legal research relating to processes and procedures within the United States Patent and Trademark Office, status and information for lawsuits and USPTO proceedings, and markets and products relevant to TTI;
- communicating and interacting with legal, business, and engineering team members, outside counsels, and state and federal agencies;
- managing payment of annuities and maintenance fees; and
- generating reports using billing, asset, and case management software.
Provide legal and administrative support to TTI’s trademark attorneys, including:
- managing and maintaining electronic files relating to trademark procurement, availability investigations, oppositions, and trademark controversies and litigation;
- conducting trademark searching and providing registrability and availability analysis;
- conducting legal research relating to processes and procedures within the United States Patent and Trademark Office, status and information for lawsuits and USPTO proceedings, and markets and products relevant to TTI;
- communicating and interacting with legal, business, and marketing team members, outside counsels, and state and federal agencies;
- managing elements of trademark prosecution; and
- generating reports using billing, asset, and case management software.

Qualifications:

Bachelor’s or Associate’s Degree.
Paralegal Certification.
4-6 years of IP Paralegal Experience in a Law Firm and/or Corporate Setting.
Proficient Skills in Microsoft Office, Anaqua, Legal Tracker, and Coresearch (or equivalent software).
Ability to Autonomously Manage and Prioritize Multiple Tasks and Projects in a Fast-Paced Environment.
Proficient Time Management and Organizational Skills.
Ability to Work Well and Effectively in a Team Environment.
Proficient Written and Verbal Communication and Advocacy Skills.
Self-Motivated and Willing to Take Ownership of Work.

Additional Info
Employer Type: Law Firm
Job Location: Anderson, SC

Patent Paralegal – Law Firm – Broomfield, CO; Denver, CO; Chicago, IL; Madison, WI; Milwaukee, WI; Waukesha, WI; Raleigh, NC; Salt Lake City, UT; or Washington D.C.

October 29, 2023- US - MidAtlantic and South, - US - Midwest, - US - Southwest, Emp - Law Firm, Work - Paralegal / Legal Secretary

The person in this position will be responsible for providing legal support on a variety of tasks focused on patent prosecution. Individuals with exceptional client service and communication skills, as well as experience in a fast-paced environment will be successful in the Patent Paralegal role. The ideal candidate will have at least 2 years of experience working as a paralegal in patent prosecution.

What You'll Be Doing:

Collaborate with attorneys to prepare, file, and prosecute new patent applications in the PCT, U.S. and foreign jurisdictions
Generate reports and monitor daily docket of deadlines and ensure that deadlines are met and system is properly updated
Facilitate ongoing communication with attorneys regarding upcoming filing deadlines
Communicate with internal staff, foreign associates and clients regarding routine or procedural patent prosecution events
Ability to meet 1,250 billable hour requirement and production target
Assist with patent due diligence projects
Work with the IP team to develop, implement, and maintain docketing processes, procedures and policies for patents, and patent applications
Maintain the integrity of electronic data in accordance with firm policy and procedures
Perform additional projects and administrative tasks as assigned

Job Requirements

Knowledge Base & Education:

Associate’s degree and minimum of two years of experience working as a paralegal in patent prosecution
The ability to learn rules, regulations, and procedures specific to the assigned practice area as well as policies and procedures established by the firm and apply them accordingly
Exceptional attention to detail and organizational skills, as well as the ability to effectively prioritize multiple projects while managing critical deadlines
Highly proficient in Microsoft Office Suite programs (Word, Excel, PowerPoint, Outlook)
Knowledge of Anaqua, Elite and/or iManage (or similar document management system) is a plus

Adaptability:

Ability to learn and embrace new skills and best practices as the position evolves and Firm needs change
Ability to work well under pressure and meet tight deadlines
Ability to work well independently as well as effectively within a team

Collaboration:

Ability to develop relationships and foster teamwork at all levels of the Firm

Communication:

Excellent interpersonal skills and ability to work effectively with a diverse group of internal and external clients, attorneys, and staff
Excellent oral and written communication skills
Ability to manage confidential information and sensitive situations with tact and discretion

Problem Solving Skills:

Ability and confidence to identify and analyze issues, make decisions, and initiate actions/solutions
Ability to respond to unexpected challenges, including proactively developing innovative solutions to complex problems while maintaining a professional demeanor

Professionalism:

Ability to maintain composure and demonstrate good judgment

Other:

Valid authorization to work in the U.S.

To be considered, please apply online at: https://lawcruit.micronapps.com/sup/JobPostingDetails.aspx?lawfirm=MiUyNTVFSms=&JobId=MW4lM2Yyb1A=&at=JTNhJTQwJTNiQQ==

Additional Info
Employer Type: Law Firm
Job Location: Broomfield, CO; Denver, CO; Chicago, IL; Madison, WI; Milwaukee, WI; Waukesha, WI; Raleigh, NC; Salt Lake City, UT; or Washington D.C.

Patent Paralegal – Law Firm – Salt Lake City, Denver, or Boulder

July 15, 2023- US - Southwest, - US - West, Emp - Law Firm, Work - Paralegal / Legal Secretary

Holland & Hart is seeking a Paralegal to join its patent practice team within the Intellectual Property practice group in the Salt Lake City, Denver, or Boulder office. This role joins a dynamic, collaborative environment focused on excellence and client service.

This position involves performing substantive legal work for the firm and its patent attorneys and requires knowledge of U.S. and foreign patent law and procedure to support a growing, innovative patent practice. This position is responsible for tasks supporting preparation and prosecution of domestic and foreign utility and design patents for innovative technology companies.

Ideal candidates will bring applicable functional and technical expertise, demonstrate a customer-oriented attitude, possess strong verbal and written communication skills with co-workers and clients, be a team player who is results-orientated, have the ability to handle change, understand how individual actions contribute to the broader business, take pride in their work, and take initiative to enhance the success of the team.

Essential Duties/Responsibilities:

Supports patent attorneys all phases of patent prosecution practice management
Maintains, organizes, and reviews documents and files
Creates and regularly maintains spreadsheets, status and intellectual property portfolio charts, and/or graphics
Manages and performs a range of duties related to an internal electronic file system
Generates templates for patent filings, including applications, responses to Office Actions and other correspondence related to the USPTO, PCT, and foreign associates
Performs tasks associated with the preparation and prosecution of patent applications
Coordinates domestic and international filings with the USPTO and foreign law offices and/or other foreign entities
Monitors deadlines for various domestic and foreign patent activities, handling routine activities in connection with the maintenance and protection of domestic and foreign patents
Performs electronic filings at the USPTO
Familiarity with Hague international design practice and procedure
Tracks and files Information Disclosure Statements with the USPTO across domestic patent families
Reviews formalities of filed patent documents to ensure proper form, including Filing Receipts, Declarations, Recordings, Information Disclosure Statements, allowed patents ready to issue, etc.)
Prepares reports and summaries for attorneys and clients
Reviews and decides on appropriate action to be taken on correspondence received from foreign associates
Researches and compiles information pertaining to national and international patent rights including searches of USPTO records, patent databases and general patent research
Manages new client intake and opening of matters
Helps to train and develop IP specialist team members
Assists in developing and maintaining client relations, including business development activities, marketing, presentations and meetings
Acts as liaison between attorneys, foreign counsel, and clients
Keeps abreast of current patent rules and procedures
Monitors developments/trends in legal terminology and patent law (e.g., USPTO policy or fee schedule changes) via regular monitoring of legal publications
Maintains proficiency in required firm and external programs and databases, including Microsoft Office, Adobe Acrobat, iManage, USPTO products, Intapp, docketing software, billing software, etc.
Cohesively works with and occasionally trains other patent personnel, including intellectual property specialists and legal assistants
Performs other functions as assigned

Qualifications:

A Bachelor’s degree or 3-5 years of experience in a professional environment required.
Minimum 3+ years of domestic and foreign patent prosecution experience required
Knowledge of USPTO systems and processes
Knowledge of patent preparation and prosecution
Strong work ethic and attention to detail
Excels within a dynamic, positive, professional, team-oriented culture
Quickly learns and comprehends complex concepts and processes
Thinks critically to understand how each task fits into a broader workflow
Works efficiently, using available technology and striving to make tasks easier and more efficient
Communicates regarding deadlines and level of workload
Flexibility for occasional evening filing
Requires superior proofreading
Requires superior oral and written communication
Requires proficiency in Microsoft Office suite products (Outlook, Word, Excel, and PowerPoint, Visio is a plus), Adobe Acrobat, iManage, USPTO products, Intapp, etc.

Application Process:

Please apply directly online and be prepared to submit a resume and cover letter. You may address your cover letter and/or direct application questions to Lydia Miller, Recruiting Coordinator LFMiller@hollandhart.com. No phone calls or unsolicited resumes from search firms, please. Search firm inquiries may be directed to Lisa Liss LVLiss@hollandhart.com.

About Holland & Hart:

Holland & Hart is ranked as one of Vault’s “Best Law Firms in the Mountain States.” Holland & Hart is also recognized as a “Best Place to Work for LGBTQ Equality” by the Human Rights Campaign Foundation” scoring 100 on the annual Corporate Equality Index. For eleven consecutive years, Holland & Hart has been awarded U.S. Gold Standard Certification by the Women in Law Empowerment Forum (WILEF), and the firm has been Mansfield Rule Plus certified since the program’s inception in 2018.

Our core values—integrity, excellence, innovation, teamwork, our commitment to one another, our diverse workforce, our communities, and living full lives—influence all aspects of Holland & Hart’s culture. We intentionally create opportunities for employees to seek balance in their professional and personal lives through long-standing programs, including remote work options and wellness opportunities so they can be in the moment with their work, with their families, or while pursuing personal interests.

Holland & Hart is a full-service law firm across eight states and in Washington, D.C. delivering integrated legal solutions to regional, national, and international clients of all sizes in a diverse range of industries. As part of its longstanding focus on diversity and inclusion, the firm has adopted a diversity plan and participates in diversity initiatives. For more information, please visit: https://www.hollandhart.com/diversity. Holland & Hart is an equal opportunity employer.

Salary Range:

As required by the Colorado Equal Pay Act, Holland & Hart is providing a good faith salary range for paralegals positions that may be based in Colorado. The compensation range for paralegals in Colorado is $31.69 - $67.31 per hour based on a 37.5-hour work week. Paralegals are eligible to receive overtime and a discretionary bonus may be available based on performance.

Benefits Summary:

Holland & Hart promotes work/life balance with a robust wellness program, PTO, and a reduced time program. Full-time employees become eligible for benefits on the date of hire, with a benefits offering that includes medical, dental, vision, life, AD&D, EAP, STD, and LTD. Also available are voluntary income protection benefits such as supplemental life, accident, critical illness, and long-term care insurances, as well as a 401(k)-retirement plan with a company match and profit sharing. Holland & Hart offers maternity, paternity and adoptive leave policies in a manner that is intended to provide for widely varying circumstances and personal/family needs relating to the birth or adoption of a child. In addition, the firm has programs that may provide for educational assistance, a subscription service for continuing legal education programs, free or discounted legal services, and opportunities through the Holland & Hart Foundation, which is a non-profit organization dedicated to creating volunteer opportunities for lawyers, paralegals, staff, families, and friends of Holland & Hart LLP. Part-time employees may have access to some of these benefits, which may be on a pro-rated basis.

Additional Info
Employer Type: Law Firm
Job Location: Salt Lake City, Denver, or Boulder

Patent Paralegal – Law Firm – Multiple Locations

June 25, 2023- US - MidAtlantic and South, - US - Midwest, - US - Southwest, Work - Paralegal / Legal Secretary, Work - Patent Prosecution

Michael Best & Friedrich LLP is seeking a Patent Paralegal to join our Broomfield, Chicago, Denver, Madison, Milwaukee, Raleigh, Salt Lake City, Washington D.C. or Waukesha office. The Patent Paralegal will work closely with attorneys in the Firm’s Intellectual Property Group. The person in this position will be responsible for providing legal support on a variety of tasks focused on patent prosecution. Individuals with exceptional client service and communication skills, as well as experience in a fast-paced environment will be successful in the Patent Paralegal role. The ideal candidate will have at least 2 years of experience in Patent Prosecution.

What You'll Be Doing:

Collaborate with attorneys to prepare, file, and prosecute new patent applications in the PCT, U.S. and foreign jurisdictions
Generate reports and monitor daily docket of deadlines and ensure that deadlines are met and system is properly updated
Facilitate ongoing communication with attorneys regarding upcoming filing deadlines
Communicate with internal staff, foreign associates and clients regarding routine or procedural patent prosecution events
Ability to meet 1,250 billable hour requirement and production target
Assist with patent due diligence projects
Work with the IP team to develop, implement, and maintain docketing processes, procedures and policies for patents, and patent applications
Maintain the integrity of electronic data in accordance with firm policy and procedures
Perform additional projects and administrative tasks as assigned

Job Requirements

Knowledge Base & Education:

Associate’s degree or minimum of two years of work experience in the field of intellectual property, or equivalent combination of education and work experience
The ability to learn rules, regulations, and procedures specific to the assigned practice area as well as policies and procedures established by the firm and apply them accordingly
Exceptional attention to detail and organizational skills, as well as the ability to effectively prioritize multiple projects while managing critical deadlines
Highly proficient in Microsoft Office Suite programs (Word, Excel, PowerPoint, Outlook)
Knowledge of Anaqua, Elite and/or iManage (or similar document management system) is a plus

Adaptability:

Ability to learn and embrace new skills and best practices as the position evolves and Firm needs change
Ability to work well under pressure and meet tight deadlines
Ability to work well independently as well as effectively within a team

Collaboration:

Ability to develop relationships and foster teamwork at all levels of the Firm

Communication:

Excellent interpersonal skills and ability to work effectively with a diverse group of internal and external clients, attorneys, and staff
Excellent oral and written communication skills
Ability to manage confidential information and sensitive situations with tact and discretion

Problem Solving Skills:

Ability and confidence to identify and analyze issues, make decisions, and initiate actions/solutions
Ability to respond to unexpected challenges, including proactively developing innovative solutions to complex problems while maintaining a professional demeanor

Professionalism:

Ability to maintain composure and demonstrate good judgment

Other:

Valid authorization to work in the U.S.

To be considered for this position, please apply online at https://lawcruit.micronapps.com/sup/JobPostingDetails.aspx?lawfirm=MiUyNTVFSms=&JobId=MW4lM2Yyb1A=&at=JTNhJTQwJTNiQQ==

Please submit a resume with your application.

Additional Info
Employer Type: Law Firm
Job Location: Broomfield or Denver, CO; Chicago, IL; Madison, Milwaukee, or Waukesha, WI; Raleigh, NC; Salt Lake City, UT; and Washington D.C.

Patent Paralegal- Law Firm – Multiple Locations

January 4, 2023- US - MidAtlantic and South, - US - Southwest, Emp - Law Firm, Work - Paralegal / Legal Secretary

Holland & Hart LLP, a large law firm, is seeking a patent paralegal to work in Washington, D.C. or Denver, CO.

Essential Duties/Responsibilities:

Supports patent attorneys in docket and all phases of patent prosecution practice management
Maintains, organizes, and reviews documents and files
Creates and regularly maintains spreadsheets, status and intellectual property portfolio charts, and/or graphics
Manages and performs a range of duties related to an internal electronic file system
Generates templates for patent filings, including applications, responses to Office Actions and other correspondence related to the USPTO, PCT, and foreign associates
Performs tasks associated with the preparation and prosecution of patent applications
Coordinates domestic and international filings with the USPTO and foreign law offices and/or other foreign entities
Monitors deadlines for various domestic and foreign patent activities, handling routine activities in connection with the maintenance and protection of domestic and foreign patents
Performs electronic filings at the USPTO
Tracks and files Information Disclosure Statements with the USPTO across domestic patent families
Reviews formalities of filed patent documents to ensure proper form, including Filing Receipts, Declarations, Recordings, Information Disclosure Statements, allowed patents ready to issue, etc.)
Prepares reports and summaries for attorneys and clients
Reviews and decides on appropriate action to be taken on correspondence received from foreign associates
Researches and compiles information pertaining to national and international patent rights including searches of USPTO records, patent databases and general patent research
Manages new client intake and opening of matters
Assists in developing and maintaining client relations, including business development activities, marketing, presentations and meetings
Acts as liaison between attorneys, foreign counsel, and clients
Keeps abreast of current patent rules and procedures
Monitors developments/trends in legal terminology and patent law (e.g., USPTO policy or fee schedule changes) via regular monitoring of legal publications
Maintains proficiency in required firm and external programs and databases, including Microsoft Office, Adobe Acrobat, iManage, USPTO products, Intapp, docketing software, billing software, etc.
Cohesively works with and occasionally trains other patent personnel, including intellectual property specialists and legal assistants
Performs other functions as assigned

Apply online at:
https://www.hollandhart.com/paralegals

Application Process: Please apply directly online and be prepared to submit a resume and cover letter. You may address your cover letter and/or direct application questions to Lydia Miller, Recruiting Coordinator LFMiller@hollandhart.com. No phone calls or unsolicited resumes from search firms, please. Search firm inquiries may be directed to Lisa Liss LVLiss@hollandhart.com.

Additional Info
Employer Type: Law Firm
Job Location: Multiple Locations

Patent Paralegal – Law Firm – Multiple Locations

December 16, 2022Emp - Law Firm, Work - Paralegal / Legal Secretary

Barclay Damon LLP, a leading law firm of nearly 300 attorneys that operates from a strategic platform of offices located in the Northeastern United States and Toronto, is seeking a patent paralegal to support its Patents & Prosecution Practice Area. The ideal candidate will have a minimum of three years of experience in preparing and filing formal documents related to domestic and international patent filings, including PCT; the successful candidate will be responsible for all aspects from initial filing through issuance. Candidates should have strong organizational and interpersonal skills, including proficiency in Microsoft Word, Excel, and related office software. Patent docketing experience, though not required, is desirable. A remote or hybrid working arrangement may be possible.

Patent Paralegal – Government – Berkeley, CA

May 17, 2022- US - West, Emp - Government, Work - Paralegal / Legal Secretary

Lawrence Berkeley National Laboratory is seeking a Patent Paralegal to work in Berkeley, CA.

What You Will Do:

Prepare legal documents required for patent filings, including:

Patent and fee transmittals for U.S. patent filings;
Patent Cooperation Treaty filings;
Application Data Sheets, Assignments, and Oaths/Declarations for U.S. patent filings;
Powers of attorney, both U.S. patent and Patent Cooperation Treaty filings;
Information disclosure statements;
Petitions for fee extensions;
Requests for Continuing Examination; and
Patent and patent application assignments and assignment recordation forms.

Other Responsibilities:

Prepare and submit legal documents for various government agencies, including the U.S. Department of Energy (DOE) and Department of Health & Human Service (National Institutes of Health), using electronic filing submission processes (iEdison) within specific timelines.
Manage legal requests and correspondence with the DOE, including elections of title, requests for extension of time letters, and discontinuance letters.
Advise Intellectual Property Office (IPO) staff and attorneys, government agencies, licensees, joint patent owners, and internal Berkeley Lab clients on the status and prosecution of patent applications.
Coordinate outside counsel, IPO attorney and staff, and inventor responses to legal notices or requests from various patent offices and government agencies.
Review invention funding sources and determine reporting per DOE, federal agency, and University of California (UC) requirements.
Assist attorneys in preparation of U.S. and foreign patent office responses, such as responses to Office Actions and Restriction Requirements, and responses to other notices or requests from U.S. and foreign patent offices.
Review and docket in intellectual property databases Office Actions, other patent office communications, and related patent documents received from the U.S. Patent and Trademark Office, foreign associates, and outside counsel.
Provide Contracts Officers with analysis of funding sources and background intellectual property on DOE agreements (Cooperative Research and Development Agreements (CRADA) and Strategic Partnership Projects (SPP) agreements).

Additional Responsibilities:

Manage and report annuity deadlines to IPO staff.
Implement specific administrative requirements for IPO data management.
Assist in gathering data and reports for various internal clients for reporting to various parties.

What is Required:

Minimum two years of related experience and an undergraduate degree, or equivalent combination of education and experience.
Experience with patent docketing databases (e.g., CPI), Microsoft Word, and Microsoft Excel.
Extensive knowledge of U.S. Patent and Trademark Office procedures and requirements.
Ability to work cooperatively with internal and external patent professionals, and with LBNL & non-LBNL scientific and administrative staff.
Understanding of industry practices.
Proven analytical skills and ability to use good judgment in solving problems.
Excellent planning and organizational skills.
Excellent oral and written communication skills.

Desired Qualifications:

Paralegal certificate from an ABA-approved program.
Formal training in paralegal work.
Experience with intellectual property databases (e.g., Sophia).
Knowledge of DOE/UC procedures and requirements, and/or understanding of Berkeley Lab policies and procedures.

Apply directly online at http://50.73.55.13/counter.php?id=228162 and follow the on-line instructions to complete the application process.

Additional Info
Employer Type: Law Firm
Job Location: Berkeley, CA

Patent Engineer – Electrical or Mechanical Engineers – Law Firm – Grand Rapids, MI and/or remote

March 17, 2022- US - Midwest, - US - Telecommute, Tech - Electrical, Tech - Mechanical, Work - Paralegal / Legal Secretary, Work - Patent Litigation, Work - Patent Prosecution

McGarry Bair is looking for Patent Engineers with a Mechanical background or Electrical background to help in protecting our clients' intellectual property. You will help analyze the patentability of inventions, including computer searching for related inventions, prepare and help prosecute patent applications, aid in assessing infringement risks for new products, and help guide the development of new products.

Qualifications:

The Patent Engineer position is a desirable alternative for an engineer or scientist seeking a non-traditional, yet related profession. The job incorporates technical knowledge with analytical skills, and requires you to apply them in a variety of technical fields. You will need to learn new technologies quickly and be able to teach others as well. You must have strong reading and writing skills in the English language. Strong computer skills, especially computer searching and research skills, are necessary. We are looking specifically for those with education and/or experience in Electrical Engineering, ideally someone that knows about motors and generators.

The best person for the job is able to succeed in a casual work environment with a client-focused, yet highly professional culture. You should enjoy working with small teams while being independently responsible for your individual tasks. We need a problem solver who is strategically agile, who enjoys variety, who is quick to learn and adapt, and who is unafraid to work intensely with quick responsiveness to rapidly changing client demands.

If you are already a Patent Agent, that is a real plus. However, for the Patent Engineer, no legal experience is required; we will teach you what you need to know. You must have a bachelor's degree in engineering or science; an advanced degree is a plus but is not required. For the Patent Engineer, opportunities for advancement to become a Patent Agent registered in the U.S. Patent & Trademark Office are available and encouraged.

McGarry Bair PC is an Intellectual Property law firm in Grand Rapids, MI, specializing in all aspects of intellectual property law world-wide, including obtaining, enforcing, and defending patents, copyrights,trademarks, trade secrets, and agreements. Our prime directive is responsive client service, which we accomplish with a team of hard-working and intelligent people who appreciate a relaxed, blue-jean culture, yet are able to thrive in an independent and sometimes intense work environment. Our office is in the heart of downtown Grand Rapids, a vibrant and growing city.

McGarry Bair is committed to creating a diverse environment and is proud to be an equal opportunity employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, gender, gender identity or expression, sexual orientation, national origin, genetics, disability, age, or veteran status.

Apply via email to:
amh@mcgarrybair.com

Include resume with your submission.

Additional Info
Employer Type: Law Firm
Job Location: Grand Rapids, MI and/or remote

Patent Agent – Other – New York

March 2, 2022- US - NYC, Work - Paralegal / Legal Secretary, Work - Patent Agent

NYU Langone, one of the nation's premier academic medical centers, is seeking a patent agent to join their team in New York.

The Patent Agent manages activities related to the disclosure and protection of new inventions in chemistry and life sciences and the transfer of technology from the Medical Center and the University to the marketplace. This includes assessing the patentability of new invention disclosures from faculty, identifying relevant prior art, analyzing substantive correspondence such as office actions from the US Patent and Trademark Office, and creating and maintaining detailed intellectual property records.

Job Responsibilities:

Evaluate invention disclosures from faculty for patentability and copyright protection.
Conduct prior art searches and summarize results in table and/or paragraph formats.
Work with the Director, Intellectual Property, Senior Director, Life Sciences Technology Transfer, outside counsel, and inventor(s) to evaluate patentability of inventions.
Assist Director, Intellectual Property, Senior Director, Life Sciences Technology Transfer, and outside counsel in preparation and prosecution of patent applications, to ensure adequate claim scope to cover commercially important aspects of invention are protected.
Monitor and manage patent prosecution deadlines.
Ensure that responses to communications and office actions from patent offices (US and foreign) are timely met without extensions.
Analyze and summarize office action rejections including any cited prior art (includes proposing arguments and/or claim amendments) and communicate to inventors, director, intellectual property, and senior director, life sciences technology transfer
Monitor deadlines and generate reports for patent maintenance fees and annuities and work with Office of Technology Opportunities and Ventures (TOV) business managers to ensure fees are paid timely.
Maintain NYU online account for patent maintenance and annuity fees.
Prepare formal patent documents such as assignments. Prepare reports and presentations as needed by director, intellectual property.
Prepare and file federal copyright registrations.
Meet with researchers to learn of their research, make them aware of intellectual property considerations, and encourage invention disclosures.
Create and maintain claim charts within a particular patent case as well as within patent families. Create and maintain patent family trees.
Create and maintain detailed notes for each patent case in electronic database including data entry.
Research prosecution matters on PAIR (and also foreign patent databases) and internal intellectual property management database
Ensure compliance with government reporting requirements for use of federal funds supporting research that has given rise to inventions and/or creations including data entry to iEdison database
Remain abreast of changes to USPTO rules, current patent prosecution issues and trends.
Meet with researchers to learn of their research, make them aware of intellectual property considerations, and encourage invention disclosures
Adhere to medical center policies and behavioral standards

Minimum Qualifications:

To qualify you must have a Ph.D. degree in chemistry
Must be Registered U.S. Patent and Trademark Office
Patent Agent (has taken and passed the patent bar examination and has good working understanding of patent process and procedures).
Experience with patenting process and patent prosecution in both chemistry and life sciences (e.g., pharmacology, biochemistry, biology, cell biology)
Excellent administrative, negotiating, interpersonal and communication skills necessary
Ability to work effectively with academic scientists to achieve consensus and promote good long-term relationships
Ability to work with tight deadlines and manage own caseload
Outstanding attention to detail and strong prioritization skills
Excellent written and oral communication skills
Drive and motivation to learn new material
Flexible, adaptable and efficient work practices
Advanced level of skill with Microsoft products such as Word, Excel, and Powerpoint and also online research tools
A technical writing sample is required.

Preferred Qualifications:
Strong technical background in both chemistry and the life sciences (e.g., pharmacology, biochemistry, biology, cell biology) with excellent academic credentials; post-doctoral research training or research experience is preferred.

Apply online at:
https://jobs.nyulangone.org/job/13931083/patent-agent-new-york-ny/#tab-id-2

Additional Info
Employer Type: Law Firm
Job Location: New York

Patent Prosecution Paralegal (5+ years of experience) – Law Firm – Chicago, IL

March 2, 2022- US - Midwest, Emp - Law Firm, Work - Paralegal / Legal Secretary, Work - Patent Prosecution

Hanley, Flight & Zimmerman, LLC (HFZ), a boutique patent law firm with its main office in Chicago, is looking to expand its team with talented and experienced legal assistant or paralegal professionals with 5+ years of experience and a demonstrated ability to work independently within a team-oriented environment. HFZ’s patent legal assistants and paralegals are responsible for supporting the preparation, filing, and prosecution of U.S. and foreign patents. The successful candidate must be able to work on his/her own initiative under limited supervision and must be comfortable handling administrative aspects of U.S. patent prosecution; monitoring and assisting practitioners in meeting docketed filing deadlines; managing electronic files, and handling client correspondence. A Paralegal typically works with one to three patent practitioners. HFZ has a liberal remote work policy permitting the successful candidate to choose to work in the office, remotely or a combination of remote and physical work attendance.

Director – IP Products and Services at Clairvolex Inc. – Small Corporation – Pacific Northwest or US East Coast Area.

January 31, 2022- US - Northeast, Work - Licensing / Other Corporate, Work - Paralegal / Legal Secretary, Work - Patent Prosecution

Clairvolex Inc., a small corporation, is seeking a Director of IP Products and Services to work in the Pacific Northwest or US East Coast Area.

Director, IP will function as a Subject Matter Expert (SME) in relation to IP product sales. As the SME, you will be responsible for:

Product demonstrations
Customer – Solutioning, Enquiries on products’ features
Supporting sales personnel in converting leads as customers
Receive and process customer feedback on products
Take part in product stand-ups
Participate in product testing and evaluation
Contribute to the product feature enhancements
Attend IP conferences and events to evangelize the Product
Create contents around AI and patent prosecution to support the marketing efforts
Participate in engineering stands when required

In relation to our IP Services business, you will be responsible for:

Key Account Management
Quality oversight for patent portfolios we develop and manage for our clients
Farming-type sales of existing customer accounts
Enhancing Customer satisfaction through strategic patent portfolio development employing quantitative and qualitative prosecution metrics
Assisting ELT (Executive Leadership Team), key managers and sales personnel in winning new accounts
Developing and executing governance processes for clients.
Managing outside counsels for functions connected with filing of office action responses, Examiner interviews and legal steps relative to allowance
Subject matter assistance to all BUs: Portfolio Development, Patent Analytics & Monetization and IP Management Services.
Training and Mentoring engineers to become proficient in patent preparation and prosecution.
You will coach, train, and mentor engineers in all aspects of US patent preparation and prosecution.

Your day-to-day responsibilities will include:

Review and quality control responses to offices actions issued by USPTO and drafted by the Patent Engineers
In conjunction with the European Outside Counsels, review and supervise the responses to office actions issued by the EPO and drafted by the Patent Engineers
Wherever necessary, and in complex cases, hands-on draft office action responses
Responsible for instructing the US outside counsels regarding filing response to office actions, Examiner interviews, preparing and filing continuations, and matters connected with prosecution of US patent applications until grant.
Train, coach, and mentor patent engineers to write high quality office action responses. Develop training materials.
Responsible for customer relations management relative to prosecution functions
Offer technical support, subject matter expertise, and solutioning support to sales and business development leadership at global levels
When required travel to client facilities for on-site reviews consistent with applicable public health safety regulations
Support through rendering subject matter expertise to the IPMS (IP Management Service) team – a large group of paralegals handling a variety of functions for multiple large in-house corporate IP operations.
Contribute to CLRC (Clairvolex Learning & Research Center) occasional articles, research papers and/or research in-put (not-mandatory)
Help in establishing the Clairvolex brand globally, and in that relation the management may task the candidate to attend conferences, networking events, roadshows and also carry out regular visits to various potential and existing client facilities.

Educational/professional qualifications:

US Patent Attorney
Must possess an EE degree from a reputed US university and JD from a well-credentialed law school

Experience:
About 5 years’ experience in patent practice either with a law firm or in-house, or in an SME role in the IP industry

Compensation:
Commensurate to industry/law firm standards in the United States

Apply via email to:
careers@clairvolex.com

Include a resume with your submission.

Additional Info
Employer Type: Small Corporation
Job Location: Pacific Northwest or US East Coast Area.

Foreign Filing Paralegal – Law Firm – Chicago, IL

November 2, 2021- US - Midwest, Work - Paralegal / Legal Secretary, Work - Patent Prosecution

Hanley, Flight & Zimmerman, LLC (HFZ), a boutique intellectual property law firm, is looking for an experienced Foreign Filing Paralegal with five (5+) years of experience to lead its Foreign Filing practice.

Intellectual Property Administrator – Law Firm – Madison, WI; Milwaukee, WI; Waukesha, WI; Chicago, IL

September 2, 2021- US - Midwest, Work - Admin, Work - Paralegal / Legal Secretary

Michael Best & Friedrich LLP is seeking an Intellectual Property (IP) Administrator for our Madison, Milwaukee, Waukesha (WI) or Chicago (IL) offices. This role will be responsible for managing the day to day prosecution of domestic and foreign trademark and copyright applications. This includes all aspects of trademark searching, clearance, prosecution, maintenance, and enforcement.

Patent Paralegal – Small Corporation – Dayton, OH

July 1, 2021- US - Midwest, Work - Paralegal / Legal Secretary

Global Graphene Group, a small corporation, is seeking a Patent Paralegal to work in Dayton, OH. The Patent Paralegal will be responsible for patent prosecution and will use the PTO's EFS system, including preparing and filing patent applications and related documents as well as all other documents typically filed in the life cycle of a patent. Additional responsibilities include:

Foreign Patent Prosecution Assistant – Law Firm – Oakland CA, Menlo Park CA, and Remote

June 18, 2021- US - Telecommute, - US - West, Work - Admin, Work - Paralegal / Legal Secretary, Work - Patent Prosecution

Weaver Austin Villeneuve & Sampson LLP, a specialty patent prosecution firm, is seeking to add to our talented staff. WAVS IP offers a pleasant, collegial work environment with competitive salaries (full-time positions offer a full complement of benefits). Remote work arrangements are possible.

IP Specialist – Law Firm – Boulder, CO and/or Salt Lake City, UT

April 20, 2021- US - Southwest, - US - West, Emp - Law Firm, Tech - Electrical, Work - Paralegal / Legal Secretary, Work - Patent Prosecution

Holland & Hart LLP is seeking an IP specialist. The Intellectual Property Specialist supports the growing, innovative, electronics-focused patent practice. This supportive position is responsible for patent-related tasks, helping to prepare and prosecute patents for some of the largest and most innovative technology companies in the world. This role joins a dynamic, collaborative environment focused on excellence and work/life balance and specifically supports the Electrical Engineering IP practice.

Essential Duties/Responsibilities:

Supports patent attorneys in docket and practice management
Performs tasks associated with the preparation and prosecution of patent applications
Manages and performs range of duties related to an internal electronic file system
Generates templates for patent applications, and responses to various Office Actions (including but not limited to: a Filing Receipt, Notice to File Missing Parts, Response to Office Action, Notice of Publication, Notice of Allowance, Issue Notification; and Letters Patent) as they relate to correspondence/filing with USPTO, PCT, and foreign associates
Prepares additional templates for various legal documents (Declaration, Powers of Attorney, Assignments)
Reviews formalities of filed patent documents to ensure proper form, including Filing Receipts, Declarations, Recordings, Information Disclosure Statements, allowed patents ready to issue, etc.)
Performs electronic filings at the USPTO
Manages new client intake and opening of matters
Maintains proficiency in required technologies such as Microsoft Office, Adobe Acrobat, iManage, USPTO products, Intapp, etc.
Performs other functions as assigned

Job Qualifications (Education, Experience and Certification):

All career-focused, interested candidates able to demonstrate the following will be considered:

Abilities

Strong work ethic and attention to detail
Excels within a dynamic, positive, professional, team-oriented culture
Quickly learns and comprehends complex concepts and processes
Thinks critically to understand how each task fits into a broader workflow
Works efficiently, using available technology and striving to make tasks easier and more efficient.

Skills

Requires superior proofreading
Requires superior oral and written communication
Requires proficiency in Microsoft Office suite products (Outlook, Word, Excel, and PowerPoint, Visio is a plus), Adobe Acrobat, iManage, USPTO products, Intapp, etc

Education

A Bachelor’s degree or 3-5 years experience in a professional environment required.

Experience

Minimum 3+ years patent prosecution experience required
Knowledge
Knowledge of USPTO systems and processes
Knowledge of patent preparation and prosecution

Competencies:

Functional/Technical Expertise – Understands necessary information, processes and procedures to carry out job responsibilities.
Customer Orientation – Views the firm through the eyes of the customer and goes out of their way to anticipate and meet customer needs.
Communication – Recognizes the essential value of continuous information exchange.
Team Player – Team oriented; maintains composure and is adaptable to the changing needs of the team.
Results Orientation – Maintains appropriate focus on outcomes and accomplishments.
Change Agility – Effectively adjusts habits, procedures, and behavior as needed.
Business Thinking – Understands the bigger picture and how individual actions fit in.
High Standards – Takes pride in putting forth high-quality work product.
Initiative – Proactively seeks ways to contribute to and enhance the success of the team.

Physical Requirements:

While performing the duties of this position, the employee must have the ability to sit, stand and/or walk for extended periods of time; manipulate (lift, carry, move) weights of at least ten (10) pounds; have repetitive wrist/hand/finger movement to work on a computer and/or related office equipment; speak clearly and concisely so listeners can understand; and regularly understand the speech of another person.

The physical demands described here are representative of those that must be met by this position to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

Work Environment:

Professional office atmosphere. Sedentary work that primarily involves sitting or standing for prolonged periods. Position may require occasional off-hour meetings and events.

The work environment characteristics described here are representative of those this position may encounter while performing the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

Note: This job description is intended to convey information essential to understanding the scope of the job and the general nature and level of work performed by job holders within this job. However, this job description is not intended to be an exhaustive list of qualifications, skills, efforts, duties, responsibilities or working conditions associated with the position.

Apply online at:
https://recruiting2.ultipro.com/HOL1009HHLLP/JobBoard/0ba64e57-f8ff-4239-a9ff-f1e3dc401ae6/OpportunityDetail?opportunityId=10491444-1812-4f1d-a57a-900bacfae332

Please include a cover letter and resume with application.

Additional Info
Employer Type: Law Firm
Job Location: Boulder, CO and/or Salt Lake City, UT

Patent Prosecution Legal Assistant – Law Firm – Denver, CO

January 14, 2020- US - West, Emp - Law Firm, Tech - Any / Other, Work - Admin, Work - Paralegal / Legal Secretary

Sheridan Ross P.C. is seeking a Patent Prosecution Legal Assistant with 3 or more years of experience. A Patent Prosecution Legal Assistant, under the supervision and direction of Attorneys, helps to manage and organize materials and information relating to the drafting, filing and prosecution of patent applications. A Legal Assistant is an essential part of the team of people providing patent prosecution services to our clients and their duties will frequently include organizational, administrative and other clerical tasks that aid in providing clear and consistent communication to our clients.

Job duties include:

Prepare documents for patent applications and complete prosecution through issuance as assigned, including assist Attorneys with initial drafting of shell patent or trademark applications, draft and review correspondence including reporting letters, Responses to Office Actions, amendments, Notice of Allowance reviews, preparation and review of Information Disclosure Statements, providing instructions to foreign associates.
E-file relevant documents with US Patent & Trademark Office and state and federal courts as assigned.
Compile and organize case materials and fill in missing document gaps for current assigned cases; compile relevant documents in databases and network drives to maintain an accessible case file; actively maintain paper and/or electronic files with all relevant materials.
Employ various Firm resources, e.g. PATTSY, and shared network drives.
Facilitate communication between Attorneys and work directly with Attorneys in coordinating and executing their requests.
Serve as a point of contact for client, when necessary, to update on case status, etc.
Other administrative duties (e.g., maintain attorney calendar) as assigned.

Qualifications and requirements:

The ideal Legal Assistant candidate is a college graduate (or equivalent experience) with experience in the legal profession and a strong interest in IP law. Excellent oral and written communication skills are necessary, as is the ability to interact professionally with staff, attorneys, legal assistants, clients and vendors. The successful candidate must be able to work independently as well as with a team, have an acute attention to detail and be able to multi-task and prioritize while working in a deadline-driven environment. Strong technical skills are required, particularly Microsoft Word, Excel, Outlook, Adobe Acrobat, and a Document Management System; knowledge of Carpe Diem, Westlaw, Relativity, Campulaw, and Sharepoint is a plus. Occasional overtime availability is required.

Contact
Interested applicants should submit their resumes to edavis@sheridanross.com.

Additional Info
Employer Type: Law Firm
Job Location: Denver, Colorado

Patent Legal Assistant – Large Law Firm – Alexandria, Va.

August 20, 2019- US - MidAtlantic and South, Emp - Law Firm, Work - Admin, Work - Paralegal / Legal Secretary, Work - Patent Prosecution

Hauptman Ham, LLP, an intellectual property law firm located in Northern Virginia, seeks a Patent Legal Assistant who will support several growing IP practice groups. This Legal Assistant will handle patent prosecution with a focus on filing applications and information disclosure statements. The position requires a keen eye for detail, excellent organizational skills, the ability to prioritize workload, communicate well with other members of the team, anticipate needs and identify solutions to problems. This position will report to the Practice Manager and may be called upon to support other practice areas, as necessary.

Legal Assistant – Large Law Firm – Denver, Colo.

August 11, 2019- US - Midwest, - US - West, Emp - Law Firm, Work - Admin, Work - Paralegal / Legal Secretary

Sheridan Ross P.C. is seeking a legal assistant with 5 or more years of heavy litigation practice, including experience in federal and appellate courts. Intellectual Property experience preferred, but not a requirement. This is an opportunity to perform paralegal-type tasks in addition to required, daily administrative tasks. The ideal candidate will have strong organizational and word processing skills, and be proficient at using standard software (Word, PowerPoint, Excel, time entry programs, etc.). Candidates should be well versed in electronically filing in federal court (e.g., using PACER) and have experience handling electronic and written document discovery as well as case docketing needs. Trial experience preferred.

Patent Coordinator – University of Illinois Urbana-Champaign – Urbana, Ill.

May 31, 2019- US - Midwest, Emp - Educational, Tech - Any / Other, Tech - Biotech, Tech - Chemical / Pharma, Tech - Computer Science, Tech - Electrical, Tech - Mechanical, Work - Admin, Work - Licensing / Other Corporate, Work - Paralegal / Legal Secretary, Work - Patent Prosecution

The University of Illinois Urbana-Champaign is seeking a Patent Coordinator. Responsibilities include the following:

Coordinate administration of US and foreign patent applications and other legal protection of UIUC technologies.
Work with OTM technology managers and UIUC inventors during the technology evaluation and patenting process, including: assisting in assembly of supporting data and documentation; reviewing patent search results; monitoring preparation and filing of patent applications, providing assistance in responding to patent office actions; and providing recommendations regarding US and foreign patent processes, costs, and alternatives.
Serve as a liaison between OTM, UIUC Legal Counsel, and outside patent counsel regarding the selection, engagement process and authorization/approval of expenditures for outside counsel.
Review and approve invoices.
Assist with drafting patent licenses and other intellectual property agreements.
Monitor actions and scheduled due dates for US and foreign patent process to ensure timely responses.
Manage inventorship, ownership, and assignment issues and decision-making.
Maintain and organize patent case files.
Keep abreast of changes in patent laws and procedures.
Work with patent counsel to manage patent costs.
Assist in the preparation of the patent budget.
Provide ongoing training and updates on patent subjects.
Review all correspondence with patent counsel and take appropriate actions as required.
Participate in the development of OTM infrastructure, policies, and procedures.
Oversee accuracy and completeness of database patent or patent-related records.
Prepare Excel reports as needed from database records on patent and patent-related matters.
Work with interns to improve searching and inventor interviewing processes, and provide mentoring for interns interested in patent law.
Prepare and file certain provisional patent applications.
Participate in campus outreach to educate faculty, students and staff on intellectual property related manners.
Manage activities of patent fellow.

Candidates must possess a bachelor’s degree in a physical science, engineering or related field with one to three years working knowledge of patent filing and prosecution procedures. Education must qualify the candidate to take the examination for registration to practice before the United States Patent and Trademark Office. Other requirements include: detail oriented with multi-tasking and strong prioritizing skills; excellent verbal and written communications skills to effectively interact with University and departmental officials/staff; ability to work in a fast-paced environment under multiple deadlines; strong interpersonal skills to effectively communicate with all levels of professionals within the organization; proven teamwork skills; ability to use independent judgment and make sound decisions regarding patents and intellectual property; proficiency with Microsoft Office suite applications; demonstrated teamwork skills in a highly complex business environment; ability to work independently and exercise good judgment and discretion.

Preferred qualifications: Advanced degree in a physical science, engineering or related field; registered patent practitioner; registered Patent Agent, if not registered, preferably has the background to meet the USPTO qualifications to become certified as a Patent Agent.

Contact
For full consideration, candidates must apply and submit a letter of application, resume, and names/addresses/phone numbers of three professional references by June 12, 2019 to: https://uajobs.hr.uillinois.edu/.

Additional Info
Employer Type: Education
Job Location: Urbana, Illinois