Intellectual Property Paralegal

This is a fully remote position, open to applicants in Minnesota, +2 more states.

📋 Description

• Provide organizational and practice-specific support to attorneys within the IP Department by overseeing patent prosecution and trademark matters.

• Organize and manage U.S. and foreign patent and trademark dockets and processes for multiple IP attorneys.

• Prepare and submit Provisional, U.S. Utility, Continuation, Divisional, Design, PCT & 371 US national stage applications, as well as reissue applications to the U.S. Patent and Trademark Office.

• File subsequent patent and trademark prosecution submissions, including responses to office actions and issue fee payments with the USPTO.

• Prepare PCT applications for the International Bureau and the USPTO.

• Facilitate national phase entry for PCT applications.

• Prepare formalities for client execution, such as Declarations, Assignments, and Powers of Attorney.

• Conduct assignment searches, manage assignment recordings, and handle chain of title projects.

• Manage and update files within the USPTO patent center database and prepare necessary responses.

• Review, file, and prepare Information Disclosure Statements along with related documents.

• Draft templates for Office Action Responses.

• Provide client management assistance by maintaining client portals, updating client status charts, generating various client docket reports for portfolio analysis, and communicating with clients about upcoming U.S. patent deadlines and filings.

• Calculate Patent Term Adjustments and process Issue Fee payments.

• Correspond with foreign associates, oversee the payment of their invoices, and prepare reporting letters for clients.

• Manage portfolio transfers and oversee multi-client portfolios.

• File and assist in the prosecution of design applications, including adherence to convention deadlines for international filings.

• Proofread and edit patent and trademark applications, formal documents, and office actions.

• Adhere to all ethical and professional standards of the firm while staying current with all learning and development requirements.

⛳️ Requirements

• Bachelor’s Degree required.

• A Certificate in Paralegal studies from an accredited institution is preferred; equivalent experience will be considered.

• Certification as a Paralegal is a plus.

• A minimum of five years of relevant work experience in a professional setting.

• Experience in a law firm is preferred.

• Extensive knowledge of U.S. patent rules and procedures; familiarity with PCT and/or national laws of other countries is desirable.

• Previous experience with Anaqua is an advantage.

• Experience in copyright application filing is a plus.

• Proficiency in Windows-based software and the Microsoft Office Suite (including Word, PowerPoint, Excel, and Outlook).

• Exceptional computer skills with the ability to quickly learn new software applications.

• Previous experience with iManage is an advantage.

• Demonstrates a fundamental understanding of artificial intelligence (AI) and is familiar with or willing to learn AI platforms (e.g., Microsoft Copilot, ChatGPT, etc.).

🏝️ Benefits

• Health insurance with an optional Health Savings Account (HSA).

• Short-term disability coverage.

• Long-term disability coverage.

• Dental insurance.

• Vision care.

• Life insurance.

• Healthcare and Dependent Care Flexible Spending Accounts.

• 401K plan.

• Vacation time.

• Sick leave.

• Employee assistance program.

• Discretionary bonus opportunities.

• Voluntary accident insurance.

• Voluntary life insurance.

• Voluntary disability insurance.

• Voluntary critical illness and cancer insurance.

• Pet insurance.

• Commuter and Transit programs available in certain markets.