Patent Paralegal

Position Title: Patent Paralegal/IDS Specialist III

Location: South San Francisco, CA 94080

Duration: 12 Months

Job Description:

The Patent Paralegal/IDS Specialist III will provide a high level of administrative support in all facets of US Patent Law to three or more patent attorneys in the Client's Legal Department. Ideal candidates must possess advanced knowledge of Patent and Trademark (PTO) rules and procedures. Candidate must be proficient at navigating Patent Center and Assignment Center. Strong knowledge of and ability to keep abreast of 37 C.F.R. rules and MPEP rules are essential. Knowledge of ex-US prosecution is a plus. As the IDS Specialist, they will be responsible for ensuring that all relevant prior art, including patents, publications, and other pertinent documents, are identified, analyzed, and properly disclosed to patent offices during the patent application process. They work closely with patent attorneys and other stakeholders to gather necessary information and ensure compliance with patent regulations and procedures.

Responsibilities:

Preparing and filing US Patent correspondence, transmittal documents, and formality documents (Declarations and Assignments).

Correspond with Foreign Associates and Outside Counsel relating to all Patent Prosecution matters.

Generate weekly docket reports and coordinate with attorneys, colleagues, Foreign Associates and Outside Counsel to ensure all deadlines are met.

Prepare and manage Information Disclosure statements (US and Israel), including the ability to comprehensively review art cited across large patent family/portfolios.

Create, organize, and maintain US and foreign patent files (paper and electronic).

Job Requirements:

A minimum of 5-7 experience in patent prosecution work is required.

High school diploma required. Bachelor’s degree preferred.

Experience with biotechnology cases is preferred.

Required technical capabilities in Microsoft Word, Outlook, and Adobe Acrobat Professional as well as basic knowledge of Excel and PowerPoint.

Experience using the USPTO electronic filing system as well as a patent docketing system (IP manager, CPI, CPA, Anaqua etc.) is required.

Experience with First to File, Google Suites, Lecorpio (IDS), and iManage are extremely beneficial.

• Strong skills in the following areas:
• Organization, attention to detail, and analytical abilities
• Effective written and verbal communication to include clarity and tact
• Ability to perform and prioritize multiple tasks simultaneously, efficiently, and collaboratively in accordance with deadlines.
• Proactive, self-disciplined, and able to work independently with minimal supervision.

Contribute to the general needs of the Patent and Legal groups.

Some examples include providing back-up assistance to peers and participating on special projects and/or other activities as requested.