IP/Patent Prosecution Paralegal

Haynes and Boone

Education
Qualifications
Benefits

At Haynes and Boone, our people are the driving force behind our success. Because we value the role every individual plays in how we deliver exceptional legal services, we hire people who will contribute to our professional reputation, enhance client relationships and share in our success.

Haynes and Boone’s Washington, D.C., office is located two blocks from the White House and within walking distance of two major metro stops (Farragut North and Farragut West). We provide outstanding service to clients in complex business, technical and finance transactions and before federal government regulatory agencies, federal courts and international tribunals. Our office has lawyers with extensive government and private sector experience, whose practices include transactional work, regulatory compliance issues and litigation in various areas, from antitrust and competition to energy regulation and international trade. Our lawyers maintain excellent working relationships with senior federal government officials. We are committed to having a diverse workforce that reflects our communities, and we seek highly motivated lawyers and staff who value our culture of respect and teamwork. All new employees in the Washington, D.C., office are partnered with one or two mentors to help them get acquainted with the firm.

This non-exempt employee who is focused, able to manage large projects, organized, detail oriented, technology savvy, and a self-starter with strong verbal and written communication skills will assist the attorneys and patent agents in all aspects of patent prosecution work including foreign filings, US prosecution work and docketing.

Essential Duties

Foreign Filings

  • Coordinate and file all matters outside of the US.
  • Communicate and coordinate with foreign counsel.
  • Ensure responses are correctly completed in a timely manner.

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 dockets.
  • Update docket and ensure it is accurate.

Client reporting of incoming correspondence and completed tasks.

Process client intake and transfer-out projects.

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 or the appropriate Human Resources Business Partner and supports the assigned attorneys in the practice area.

Qualifications

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. 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. 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. 

Education:

The IP Paralegal must have a paralegal certification from an ABA approved school or bachelor’s 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. Overtime Required. 

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Confirmed 2 hours ago. Posted 30+ days ago.

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