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IP Paralegal - US & Foreign Filing
Ref No.: 19-03415
Location: Boston, Massachusetts
Job Description:
In this role, you will report to the Intellectual Property Manager.  You will be responsible for providing a high-level of efficient and timely support for a variety of the firm's clients.  The IP paralegal will assist with the preparation of US and foreign documents for filing in respective patent offices, prepare follow-on prosecution documents, track and communicate deadlines, perform relevant on-line searches, prepare cost estimates, and review intake of daily correspondence to determine what needs to be communicated to the client. 

RESPONSIBILITIES: 
• Develops a standard workflow and prioritizes work tasks; becomes proficient in new processes. 
• Assists in developing foreign filing letters based upon new rules/laws.
• Prepares supporting documents for attorneys, including but not limited to, the following:
US and PCT application filing papers, including Declarations, Assignments, and Powers of Attorney;
US prosecution/follow on papers, including Responses to Missing Parts/Corrected Papers, Responses to Office Actions, Petitions, Assignment recordations, Issue Fee and related/other USPTO forms;
PCT  follow on papers, including Responses to Invitations, PCT Powers of Attorney, Notification of Recording of Change, and other related PCT communications;
Prepares instructions to foreign associates for filing national patent applications in  various foreign patent offices, and completes all formality requirements;
Prepares US and foreign filing estimates; 
Reviews incoming correspondence, including paper and electronic mail, and takes/facilitates necessary action; and, 
Works with outside vendors to obtain formal drawings and legalization of documents.
• Complies with docket and de-docketing practices.
• Manages the docket of US and foreign applications to ensure all dates are accurate and outstanding deadlines are met timely.  
• Assumes additional responsibilities as assigned.


QUALIFICATIONS:
• BA/BS degree required.
• 2-3 years' experience as a paralegal  in US and foreign intellectual property practice.
ADDITIONAL SKILLS/EXPERIENCE:  
• Knowledge of procedural requirements for filing US and PCT patent applications with the USPTO and the World Intellectual Property Office (WIPO).
• Hands-on electronic filing experience at the USPTO.
• Knowledge of foreign filing and national phase entry procedural requirements.
• Proficiency in Microsoft Office.
• Excellent grammar, spelling and proofing for content and context.
• A high degree of organization, flexibility and reliability to set priories, manage multiple responsibilities and work well under pressure.
• Ability to assume responsibility for assigned tasks, and if necessary, able to delegate workload in order to manage multiple tasks and meet deadlines.
• Strong verbal and written communication skills; excellent interpersonal skills. 
• Ability to work collaboratively with team members as well as attorneys and staff throughout the firm. 
• Adaptable to last minute changes and disruptions, and able to accommodate occasional overtime work when required.