Intellectual Property (Patents) Paralegal (copy)

Fluence - Arlington, VA

Full-time - Mid Level

Hybrid - Arlington, VA

Utilities

About the position

The Intellectual Property (IP) Paralegal at Fluence Energy, Inc. plays a crucial role in supporting the In-house IP Counsel and the IP Team in the practice of IP law. This position is integral to managing both US and foreign dockets, ensuring that the operations of the IP Legal Department run smoothly and efficiently. The IP Paralegal will report directly to the Head Counsel for Intellectual Property and will be involved in various aspects of IP management, contributing significantly to the company's mission of transforming the way we power our world. In this hybrid role, which requires 2-3 days in the office in Arlington, VA, the IP Paralegal will assist in managing the IP Portfolio, particularly focusing on patents. Responsibilities will include organizing IP Committee meetings, registering and managing users in patent database management software, and overseeing invoices and billing processes. Daily operations will involve maintaining the docketing system, which includes docketing patent deadlines, annuities, and trademarks, while coordinating with the internal IP team and outside counsel on related matters. The IP Paralegal will also be responsible for maintaining and generating docket reports for attorneys, filing electronically with the United States Patent and Trademark Office (USPTO), and collaborating with outside and foreign counsel on global filings. This role requires assisting in-house and outside counsel in the preparation, filing, and prosecution of US and foreign patent applications, including the preparation and submission of Office Action responses, Information Disclosure Statements, Amendments, and other formal documents. Additionally, the IP Paralegal will support all legal IP matters, including IP litigation, which involves drafting pleadings, locating case law, preparing exhibits, conducting discovery, and corresponding with experts and other witnesses. The position also entails transactional support, such as scanning documents, reviewing critical dates, and ensuring timely responses to correspondence. Effective communication with clients, vendors, Global Patent Office personnel, court personnel, and attorneys is essential, as is the management of attorney/agent calendars and meetings.

Responsibilities

• Assisting in managing the IP Portfolio (patents) and organizing IP Committee meetings.
• Registering and managing users in a patent database management software; overseeing invoices and billing.
• Daily maintenance/operation of docketing system including docketing patent deadlines, annuities, and trademarks.
• Coordinating with internal IP team and outside counsel on related matters.
• Maintaining and generating docket reports for attorneys; filing electronically with the USPTO.
• Working with outside and foreign counsel on global filings; monitoring applications and filing responsive forms.
• Assisting in-house and outside counsel in the preparation, filing, and prosecution of US and foreign patent applications.
• Preparing and submitting Office Action responses, Information Disclosure Statements, Amendments, RCE's, and formal document preparation and execution.
• Supporting all legal IP matters including IP litigation, drafting pleadings, locating case law, preparing exhibits, conducting discovery, and corresponding with experts.
• Providing transactional support with scanning, reviews for critical dates, and ensuring timely response for correspondence.
• Communicating with clients, vendors, Global Patent Office personnel, court personnel, experts, attorneys, and others as directed.
• Updating the company DMS and/or SharePoint with required and/or directed information; managing attorney/agent calendars and meetings.

Requirements

• 6+ years of administrative/paralegal experience in IP law; or Paralegal certificate and 4+ years of work experience in a law firm, an in-house legal department, a consulting firm, or comparable experience elsewhere.
• Basic knowledge of US and foreign patent procedures, standards, and processes.
• Basic knowledge of IP paralegal concepts and principles.
• Excellent docket review skills and proofreading skills are essential.
• Experience with IP Management software(s) and IP Digital Document Management software(s).
• Proficient in MS Office (Word, Excel, Outlook, Teams, etc.).
• Excellent organizational and communication skills.
• Strong judgment in business and interpersonal matters.

Nice-to-haves

• Experience in a fast-paced legal environment.
• Familiarity with IP litigation processes.
• Ability to work collaboratively in a team setting.

Benefits

• Unlimited PTO
• Medical, Dental, Vision, Life and Pet Insurance
• Generous 401K Match
• Annual Bonus Incentive