Foreign Filing Paralegal

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Posted On: 06.21.2017
Department: Paralegals
Office: Boston, MA

Description
The Foreign Filing Paralegal works closely with the attorneys, technology specialists, and staff to ensure that our clients’ foreign intellectual property is protected and all foreign requirements are anticipated and satisfied. The Foreign Filing Paralegal must provide exceptional client service (internal and external) and deliver a consistently high-quality work product.

Responsibilities

Proactively manage a foreign patent prosecution docket ensuring all deadlines are met in an efficient, timely manner.

Communicate appropriate information to Docketing daily and respond as soon as possible to all Docketing inquiries.

Work closely with attorneys, technology specialists, and staff to prepare and file PCT, foreign, and US national phase patent applications and formal papers as needed.

Prepare correspondence/documents to send to clients, foreign associates, the US Receiving Office, and international patent offices.

Work directly with clients to obtain executed assignments, declarations, powers of attorney and other documents.

Prepare foreign patent cost estimates.

Prepare formal papers, and other miscellaneous documents as needed.

Prepare client reporting letters, foreign attorney instruction letters.

Learn, adhere to, and uphold firm standards and procedures.

Maintain remarks section in CPi.

Communicate directly with clients, foreign attorneys, USPTO and International Bureau of WIPO under the direction of a patent attorney or agent. Double check work product before presenting to attorney for review, and again before sending or filing.

Ensure that client-matter numbers are opened according to the IP Section’s guidelines and before work is started.

Timely review and forward annuity information to the Annuity Coordinator, and foreign attorney invoices to Finance.

Maintain neat and orderly foreign patent files.

Record time daily in DTE and strive to meet billable target.

Perform additional responsibilities as requested.

Qualifications

Bachelor’s degree required.

1-3 years of patent prosecution experience in a law firm required.

Solid experience and working knowledge of PCT and foreign patent rules, filing requirements, and forms.

Must have experience working in PAIR and e-filing with the USPTO Receiving Office.

Must have a positive, can-do attitude.

Must have a strong commitment to excellence, customer service, and being part of the Mintz Levin team.

Excellent communication skills, both verbal and written.

Ability to multi-task and work effectively and efficiently, managing multiple competing priorities.

Strong attention to detail, analytical abilities, and resourcefulness.

Ability to work as a team and independently.

Flexibility to work overtime when necessary.