Paralegal - IP Patent

Overview

Manage patent prosecution docket, filings, and client communications for electrical/computer science IP portfolios.

Key Responsibilities

• patent filing
• document prep
• case management
• docketing
• report preparation
• ids updates

Tasks

-Review, prepare and file multiple patent application types, including Provisional, Non-Provisional, Track 1, Design, PCT, US National Stage, Convention Filings, as well as coordinate international filing responsibility -Prepare and file documents including, but not limited to Notice to File Missing Parts, Foreign Signature Documents, Formal Documents, responses to Office Actions, Issue Fee Transmittals, and Information Disclosure Statements, etc. -Perform research and compile data as requested -Responsible for case and file management, including uploading communications and documents to docketing and DMS systems, as well as maintaining and updating files and client portals and attending any status meetings -Manage docket and patent prosecution practice for assigned global client portfolios -Review, prepare, and file patent prosecution application and supporting documentation with the U.S. Patent and Trademark Office and/or WIPO, as well as manage international patent filing requests and other documents for various countries -Prepare, maintain, and update reports for clients regarding status of applications and patents, as well update client dockets and sending reminders to attorneys, international counsel, and clients as needed -Effectively set priorities, meet deadlines, and manage multiple projects, including preparation and maintenance of internal docket reports, charts, and meeting agendas -Review incoming correspondence from the USPTO, WIPO, and/or international associates regarding status of patent applications, including Official Filing Receipts, Publications, Notifications, Assignments, Notice of Allowances/Acceptances, and Letters Patent documents. Ensure accuracy of contained information and when necessary, prepare and file necessary documents to correct errors -Review, prepare, monitor and update IDS charts and/or client portfolio spreadsheets as needed

Requirements

• uspto
• epct
• cpi
• paralegal cert
• microsoft
• 7+ years

What You Bring

-Exceptional verbal and written skills with clients, internal and external counsel, USPTO personnel and vendors, as well as administrative and management skills to coordinate project management and handle substantive tasks for multiple, high-tech IP cases and/or portfolio -Strong organizational skills and ability to prioritize multiple projects -Knowledge of USPTO, PCT, and international patent rules and procedures -Docketing knowledge and experience, with CPi software experience preferred -Paralegal Certificate -Proficient in filing with U.S. Patent and Trademark Office and ePCT -Proficient in understanding IP docket and deadlines and maintaining Secondary Docket -Proficient in Microsoft programs (Word, Excel, PowerPoint, Outlook, Adobe) -7+ years IP experience, supporting high-volume Hard Science portfolios -Strong attention to detail, communication, and interpersonal skills

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About Polsinelli

-Founded in 1972 in Kansas City by three attorneys, Polsinelli began serving local business and real estate clients. -Over five decades it expanded via strategic hires—not large mergers—growing to 23 offices and establishing a footprint in markets like Philadelphia, Fort Worth, Park City, Miami, and Nashville. -Polsinelli built standout practices in healthcare, real estate, finance, technology, private equity, life sciences, litigation, and IP. -The firm tackles a wide range of high-stakes matters: from multi-state real estate financings and major healthcare regulatory work to patent litigation, corporate M&A, labor disputes, and cybersecurity. -Polsinelli positions itself as a 'daily and weekly' partner to mid-market corporate clients, emphasizing consistent presence and industry-focused counsel.

Sector Specialisms