Intellectual Property Paralegal

About the job

Description

• Prepare drafts of patent and trademark applications, filing, formalities, and office action response documents
• Communicate with Firm attorneys and staff regarding patent and trademark application preparation, filing and prosecution matters
• Communicate with inventors and owners clearly and simply regarding: approval and filing of draft patent and trademark applications; proposed responses to office actions; recommendations to file continuation applications and other trademark applications
• File documents through and retrieve information from EFS-Web, PAIR, TESS, TSDR, ePCT, etc.
• Support transfer of IP assets, including gathering and recording necessary assignment documents and importing relevant data and documents
• Coordinate payment or non-payment of issue fees
• Monitor, maintain and clear dockets by coordinating with attorneys and staff to make sure all docket dates are satisfied.
• Generate IP Status reports and various other reports from the docketing database as requested
• Process invoices from prosecution, translation, and other vendors
• Prepare and send demand letters
• Make confident, beneficial recommendations based on knowledge and competence about the patent and trademark processes
• Perform other duties as assigned

Requirements

• NOT REMOTE - Work in our Tempe, AZ office.
• Positive, professional, courteous, and team-oriented
• Honor the highest ethical standards
• Communicate clearly and thoroughly (written and verbal).
• Strong computer skills, including proficiency with Windows and Microsoft Office Suite applications (Outlook, Word, and Excel).
• Organized self-starter with attention to detail, ability to prioritize tasks and responsibilities to meet deadlines
• Ability to work independently, manage multiple priorities, and work well under pressure in a fast-paced environment with a very high degree of accuracy.
• Eagerly seek constructive feedback

Preferences

• At least 5 years of patent and trademark filing and prosecution experience
• Experience with international patent and trademark applications and documents, including PCT and Madrid Protocol
• Knowledge of US and foreign patent and trademark prosecution rules and procedures
• Patent docket experience, preferably with CPI