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Paralegal - Patent

Company: Winthrop & Weinstine
Location: Saint Paul
Posted on: June 4, 2024

Job Description:

Job DescriptionTITLE Paralegal - Patent

ABOUT THE ORGANIZATION

Winthrop & Weinstine is a leading corporate law firm that believes in putting clients first, culture second and paving our own path forward. We bring perspective, insight and a whole lot of hustle to protecting and propelling our clients' business. Through a culture of fresh thinking, we put the law to work.

EOE STATEMENT

Winthrop & Weinstine is an Equal Opportunity Employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, disability status, protected veteran status or any other characteristic protected by law.

DESCRIPTION Winthrop & Weinstine is seeking a Paralegal to provide support to our Patent Group. The responsibilities for this position will include, but not limited to:

  • Collaborate with attorneys, other firm members, and clients to file, prosecute US, PCT, and foreign patent applications including National Phase, Direct National, Utility, Continuation, Divisional, CIP, and Provisional.
  • Educate clients & firm members on a variety of prosecution needs such as country law updates, pilot programs, & foreign filing strategy.
  • Preparation & filing of US patent prosecution documents including all aspects of initial application filings, Preliminary Amendments, Missing Parts/Requirements responses (Declaration, Power of Attorney, Sequence Listing, Replacement Drawings, Substitute Specifications), Assignments, Information Disclosure Statements, retrieving references; review & preparation of responses to Restriction Requirements, Office Actions, & Appeals; final review of entire file history corresponding to issuance of Notice of Allowance, payment of Issue Fee; preparation & filing of corrections on Filing Receipts & Assignment Recordations, other special requests.
  • Prosecution of PCT applications including review and response to all incoming documents from the RO, IB, ISA, & IPEA.
  • Preparation & coordination of filing for foreign direct national & national phase patent applications. Correspondence with foreign counsel at all stages of prosecution. Review & recitation of foreign IP laws & requirements to clients. Review of all incoming correspondence from foreign associates for deadlines and other requirements to progress applications.
  • Manage patent docket deadlines, ensure all filings are completed in a timely manner, and maintain updated information on patent applications; oversee outsourced docketing functions, perform docketing and file management.
  • Preparation of docket reports & discussions with clients and firm members regarding deadlines & requirements in the US & worldwide.
  • Communicate effectively with inventors, clients, and foreign counsel to ensure the smooth progression of patent matters.
  • Handle administrative tasks such as managing files, organizing documents, and maintaining electronic and physical records.

    POSITION REQUIREMENTS
    • A minimum of three years of experience as a Patent Paralegal, preferably within a law firm or corporate legal department.
    • Experience with USPTO and PCT filings, as well as common international rules and procedures.
    • Excellent communication skills, both written and verbal.
    • Proficiency in using patent database software and document management systems.
    • Experience with Foundation IP docket management software a plus.
    • Ability to work independently and collaboratively in a team-oriented environment.
    • Strong organizational skills and attention to detail, including the ability to prioritize multiple projects and meet deadlines.
    • Paralegal certificate or Bachelor's degree is preferred.

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Keywords: Winthrop & Weinstine, St. Paul , Paralegal - Patent, Legal , Saint Paul, Minnesota

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