Commercial Counsel
Writer
Senior Paralegal
Perkins Coie
full-time
Posted on:
Origin: • 🇺🇸 United States • Arizona, California, Washington
Visit company websiteJob Level
Senior
About the role
- Prepare and file patent and design applications and prosecution documents via the United States Patent and Trademark Office (USPTO) Patent Center
- Prepare and file PCT applications via ePCT and the USPTO Receiving Office
- Manage Information Disclosure Statements (IDS), including reviewing prior art, and preparing and filing submissions with the USPTO
- Communicate with clients, government agencies/officials, foreign agents, consultants, and other parties regularly to collect and assemble information
- Communicate findings to the appropriate parties
- Manage a docket and track deadlines on a secondary docket
- Monitor and follow up with the appropriate parties on action items and filing deadlines
- Manage client portfolios including preparing and maintaining status reports and prior art charts
- Maintain current knowledge of U.S. and PCT rules as they relate to the Patent Prosecution practice
- Assist with client transfers including review of the chain of title, submission of Revocation and Substitute Power of Attorney documents to the USPTO, and preparation and review of electronic file history
Requirements
- Five-plus years of recent experience working as a patent prosecution secretary or paralegal in a law firm or in-house legal department or equivalent
- A paralegal certificate or bachelor’s degree is a strong plus
- Thorough knowledge of all phases of U.S. and PCT patent prosecution processes, procedures, databases, and filing systems
- Familiarity with international procedures, corresponding with foreign associates, and managing foreign deadlines
- Possession of superb organizational, analytical, and communication skills
- Ability to establish effective working relationships with the firm’s lawyers and business professionals, clients, and other professionals
- Ability to handle multiple assignments, ability to work well under pressure, and the flexibility to assist the team in meeting client demands on accelerated schedules
- Possession of basic computer skills including Word, Excel, PowerPoint, Acrobat, and Outlook
- Ability to conduct legal research and complex factual investigations
