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Job Title: Patent Paralegal Salary: negotiable / Yearly
Location: Princeton, New Jersey Type: Full-Time
Zip Code: 08540

Description:

RELATIONSHIPS:

A Patent Paralegal reports to a managing attorney in the Intellectual Property Department (IPD) and is under the supervision of the Associate Manager for Patent Administration. A Patent Paralegal works with patent/intellectual property attorneys, File Clerk(s), and other positions in IPD as well as with foreign and domestic agents, patent authorities, and with relevant stakeholders, including directly working with inventors, affiliates, administrative and professional staff.

ESSENTIAL FUNCTIONS:

-Analyzing incoming worldwide patent authority, agent, third party, and Corporate Patent correspondence
-Analyzing order letters, patent authority communications, and communications from agents and third party stakeholders (e.g., critically reading to identify and discern issues; taking appropriate action thereon)
-Independently preparing patent authority submissions for formality matters
-Preparing Information Disclosure Statements
-Preparing patent assignments
-Preparing Sequence Listings and related filings
-Preparing inventor declarations
-Preparing responses to missing parts notices and related notices
-Handling other patent authority formality submissions
-Managing and supporting data/docket management functions
-Validating docketing information
-Removing due dates from docket
-Providing back-up support in entering docketing information
-Using docketing reporting systems to provide docket reports to Department
-Managing document management/archiving of legal (often confidential, privileged, and/or business sensitive) records
-Ensuring appropriate electronic storage and management of documents in electronic document management systems
-Assisting with management of file wrapper archive
-Independently communicating with patent authorities, agents, and third parties.
-Preparation, transmission, and handling of correspondence
-Conducting telephonic discussions with patent authority representatives
-Investigating prosecution-related issues in PAIR and other patent document management systems
-Supporting substantive patent authority submissions.
-Initial document preparation of substantive submissions.
-Managing filing of patent documents
-Using EFS-Web for electronic submissions
-Using EFS-Web and related systems (e.g., PCT-EASY) for PCT filings
-Managing foreign filings via country-specific agents
-Supporting development of practices and procedures for the patent function
-Providing other administrative and legal support to attorneys and stakeholders
-Performing initial patent term adjustment analysis
-Supporting on boarding and training of new staff

KEY SUCCESS FACTORS: EDUCATION, EXPERIENCE, KNOWLEDGE AND SKILLS
• Either (a) BS/A or paralegal certificate (or equivalent) plus at least 3 years of experience OR (b) at least 8 years of relevant patent experience required; international patent prosecution experience preferred.
• Strong skills in Microsoft Office and Adobe required.
• Database knowledge helpful, particularly patent docketing database.
• Must be highly organized and detail-oriented.
• Strong work ethic and sense of responsibility.
• Must be able to manage multiple priorities.

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