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Patent Prosecution Paralegal -- Foreign Filing

Company: Haynes and Boone, LLP
Location: Palo Alto
Posted on: May 3, 2021

Job Description:

Job Description Job Description Summary The Palo Alto office of Haynes and Boone, LLP is searching for an accomplished and team-oriented Patent Prosecution Paralegal who thrives in a fast-paced environment to join our IP practice. To succeed, one must be focused, detail-oriented, and organized. Must be able to manage large projects, be technology savvy, and a self-starter with strong verbal and written communication skills. The Paralegal will assist the attorneys and patent agents in all aspects of patent prosecution work with a primary focus on foreign filings, however, US prosecution work, portfolio management and docket review are also key areas.

This is a non-exempt position based in Palo Alto. However, we are currently working remote. As we continue to open new offices, expand our practices and grow our attorney ranks in Northern California, there is a great opportunity now at Haynesboone - Palo Alto for an Intellectual Property Patent Prosecution Paralegal. We offer an inclusive and diverse workforce and a competitive compensation package. Come join us!

Essential Function Foreign Filings Coordinate and file all matters outside of the US including IDSs. Communicate and coordinate with foreign counsel. Ensure responses are correctly completed in a timely manner. Handle filings to USPTO via e-filing (EFS web), WIPO, and some EPO

US Prosecution Coordinate IDS preparation and tracking of references. Review the Notice of Allowance prior to payment of issue fees. Assist in preparation of declarations, certificates of correction and corrected filing receipts. File individual actions as needed.

Docketing Oversee tracking and maintenance of individual attorney dockets. Update docket and ensure it is accurate. Process client intake and transfer-out projects. Prepare client reporting of incoming correspondence and completed tasks. Prepare status reports and other client-requested reports/tasks. Maintain client correspondence. Assist in the performance of prior art searches and reports related to due diligence and clearance studies.

Other Duties Must be able to handle special projects as requested. Must be willing to assist other team members as needed. Perform other related duties as needed or assigned.

Reporting Relationship The IP Paralegal reports directly to the Office Administrator and supports the assigned attorneys in the practice area.


Knowledge/Experience: The IP Paralegal must have a minimum of three years of proven progressive patent prosecution experience and should possess the ability to manage a multitude of tasks simultaneously in an organized manner. Must be knowledgeable in USPTO and foreign filing processes and PCT. This employee should be able to work independently with minimal supervision. This individual must be able to accurately record billable and non-billable time.

Skills: The IP Paralegal must possess strong verbal and written communication skills including grammar, spelling and punctuation. Must be able to demonstrate these skills at all levels in the firm. Must have the ability to conduct legal research and translate difficult concepts into simple terms. Strong computer/technical proficiency is a must with an intermediate knowledge of Microsoft Word, Excel and PowerPoint. The individual must possess skills support remote work including instant messaging (such as Jabber), remote meeting skills (Webex) and strong phone etiquette, attention to detail and follow through skills. Must have strong client-service skills, ability to be flexible and work effectively as part of a team.

Education: The IP Paralegal must have a paralegal certification from an ABA approved school or bachelors degree in a field related to law, administration or liberal arts.

Physical Demands Must be able to move around the office up to 15% of the time to make copies, fax, file, etc. Remains stationary at least 85% of the time. This position constantly operates, computers and other office productivity machines (e.g., fax machine, copier, printer, etc.). Occasionally required to move documents or files weighing up to 15 lbs. This position requires constant communication and exchange of information with the Firm attorneys, clients and staff. This position must be able to inspect and observe information on a computer screen at least 80% of the time.

Working Conditions Office Environment. Work across offices spanning different time zones. Able to work overtime.

Company Description Haynes and Boone, LLP is one of the American Lawyer top 100 law firms, with more than 600 lawyers in 18 offices and 40 major legal practices. We are among the largest firms based in the United States. Our growth has been driven by our client service strengths, especially our problem-solving acumen and our ability to collaborate with clients.

It is our mission to be a preeminent law firm that serves clients globally on sophisticated legal matters while maintaining a special culture founded on teamwork, a healthy work environment, and a strong work ethic. While every law firm believes culture is an important component of success, our culture is truly unique. Our culture is defined by our collaborative work environment and by putting the interests of our clients first. It focuses on teamwork, an environment of mutual respect, and a long-term view that supports investing in the future and the success of Haynes and Boone as an outstanding professional service institution.

Keywords: Haynes and Boone, LLP, Palo Alto , Patent Prosecution Paralegal -- Foreign Filing, Other , Palo Alto, California

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