Patent/Trademark Paralegal

$79,000 - $109,000/Yr

Fox Rothschild Llp - Lawrence Township, NJ

Full-time - Mid Level

Lawrence Township, NJ

Securities, Commodity Contracts, and Other Financial Investments and Related Activities

About the position

Fox Rothschild LLP is seeking a Patent/Trademark Paralegal with a minimum of six (6) years of experience. The successful candidate will be responsible for preparing and filing all manner of patent-related documents with the USPTO via EFS-Web and/or Patent Center. This includes handling all aspects of U.S. and PCT patent prosecution, such as new utility, provisional, and design patent applications, office action responses, Information Disclosure Statements, assignment recordations, responses to pre-examination formality notices, sequence listings, and issue fee payments. Additionally, the paralegal will prepare and file all PCT documents with WIPO via ePCT and effect national phase entry of PCT applications through our network for foreign associates or specialized vendors. It is crucial to ensure that foreign deadlines are reported to clients and satisfied by agents, including formal document requirements, requests for examination, office action responses, and grant formalities. The role also involves coordinating and communicating with clients, drafting correspondence to report deadlines, responses as filed, and sending reminders. The paralegal will perform online research via public access websites and U.S. and foreign patent offices. Familiarity with CPi docketing software and IPDAS document production and IDS software is a plus. The candidate will be responsible for organizing and maintaining electronic client files, managing prior art lists, and completing special projects, including assignment, intake, and due diligence projects as assigned. Overall support for all aspects of U.S. and foreign patent portfolio management is expected, along with the flexibility to perform other duties as needed.

Responsibilities

• Prepare and file all manner of patent-related documents with the USPTO via EFS-Web and/or Patent Center.
• Handle all aspects of U.S. and PCT patent prosecution, including new utility, provisional, and design patent applications.
• Respond to office actions, prepare Information Disclosure Statements, and manage assignment recordations.
• Effect national phase entry of PCT applications via our network for foreign associates or specialized vendors.
• Coordinate and communicate with clients, drafting correspondence and reporting deadlines.
• Perform online research via public access websites and U.S. and foreign patent offices.
• Organize and maintain electronic client files and manage prior art lists.
• Complete special projects including assignment, intake, and due diligence projects as assigned.
• Provide overall support for all aspects of U.S. and foreign patent portfolio management.

Requirements

• Bachelors' degree or equivalent work experience required.
• Minimum of 6 years' experience in a law firm or in-house legal department required.
• Ability to multitask using analytical and problem-solving skills in a fast-paced environment.
• Ability to function as part of a firm-wide team.
• Excellent verbal and written communication skills.
• Demonstrate flexibility regarding client and legal team requests.
• Achieve a high level of productivity.

Nice-to-haves

• Knowledge of CPi docketing software and IPDAS document production and IDS software.

Benefits

• Competitive salary based on experience and location.
• Comprehensive benefits package including health insurance, retirement plans, and paid time off.