Patent Paralegal at Dorsey & Whitney

Dorsey & Whitney

Full-Time

Mid Level

Seattle, WA, USA

Not defined

08 Jul → 07 Aug

Job Description

We are seeking a Patent Paralegal in our Seattle office. In this role, you will be responsible for maintaining and managing heavy U.S. and foreign patent prosecution dockets, including responsibility for ensuring deadlines are met, original correspondence is drafted, and tasks are completed.

Dorsey values the strength that comes from a diverse and inclusive workplace. It contributes to the success of our people and our clients and enriches our experience. We encourage individuals with diverse backgrounds and experiences to apply.

Dorsey & Whitney LLP is an EEO/AAP/Disabled Vets Employer. All qualified applicants will receive consideration for employment without regard to race, color, creed, religion, ancestry, sex, national origin, sexual orientation, gender identity, affectional preference, disability, age, marital status, familial status, status with regard to public assistance, military or veteran status, or any other legally-protected status.

Dorsey participates in E-Verify.

Job Responsibilities

  • Prepare documents and review patent related documents, such as correspondence and filings covering all aspects of U.S. patent prosecution.
  • Coordinate and communicate with clients, draft correspondence, prepare office action response shells, prepare Information Disclosure Statements and prior-art reference management, assignment recordations, inventor declarations, application data sheets, continuing applications, etc.
  • Prepare PCT request forms via ePCT and PCT-SAFE.
  • Handle E-filing of U.S. patent applications, responses to office action, information disclosure statements, formalities responses and e-Petitions through EFS-Web.
  • Handle E-filing PCT applications with WIPO through ePCT and the U.S. Receiving Office through EFS-Web.
  • Handle E-filing PCT related documents/action through ePCT.
  • Effect national phase entry of PCT applications, and prepare and file continuing applications.
  • Correspond with clients including reporting deadlines, responses as filed, sending reminders, etc.
  • Correspond with foreign associates, oversee payment of foreign associates' invoices, and preparation of reporting letters to client.
  • Perform on-line research via public access websites, U.S. and foreign patent offices.
  • Organize and maintain electronic client files.
  • Update monthly status reports for select clients.
  • Complete special projects including assignment, intake, and due diligence projects, as assigned.
  • Perform overall support for all aspects of U.S. and foreign patent portfolio management.

Requirements / Qualifications

  • Bachelor’s degree and/or paralegal certificate or equivalent experience within a patent practice area.

  • Excellent oral and written communication skills and demonstrated analytical ability.

  • Ability to set priorities, exercise independent judgment, and initiate projects.

  • Ability to work well under pressure to meet deadlines; responsible; resourceful; professional.

  • Basic knowledge of all aspects of U.S. patent prosecution, including identifying incoming communications from the USPTO and foreign associates and preparation of template responses for same.

  • Experience conducting searches on databases.

  • Proficient with online resources including EFS-Web electronic filing system and PAIR, Global IP Estimator, and at least one docket database (preferably Foundation IP).

  • At least two years of IP patent prosecution experience (preferred).

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