IP Paralegal - Design Patent Prosecution Department
Description:
Banner Witcoff is a leader in intellectual property law for more than 100 years. We are the trusted IP partner of choice for organizations around the world. We provide sound legal guidance and inventive IP solutions to power business for start-ups, Fortune 500 companies, and everything in between.
Banner Witcoff’s Design Patent Prosecution Department assists in the procurement of design patents for our clients. The Design Team has helped to make Banner Witcoff the number one firm in the country for Design Patent Prosecution.
As a member of our Design Team, you’ll have a big impact on the firm and our clients by helping to manage and build design patent portfolios. Our Design Team is made up of Assistants, Paralegals, and Team Leads who are resourceful, positive, collaborative, and supportive. We work as individuals, as team members, and as part of a growing and innovative law firm. We pride ourselves on our relentless attention to detail and place an immense value on providing exceptional client service, both internally and externally. Our team is diverse, high energy, and dedicated to maintaining high standards. This is an environment of learning, education, job advancement, and showcasing your skills.
As a Design Team member, you will be responsible for:
- Direct correspondence and communication with our clients
- Direct communication with USPTO (U.S. Patent & Trademark Office)
- Daily interaction with attorneys – in person, by email, and by phone
- Conducting clearance and patentability searches
- Managing the intake of new applications and new clients
- Gathering information in preparation of design application materials
- Collaboratively working with attorneys and draftsmen to perfect formal patent drawings
- Filing U.S. design patent applications with the USPTO
- Collaboratively working with attorneys in drafting Responses to various Office Actions
- Assisting attorneys in Post-Allowance Review of design patent applications
- Collaboratively working with attorneys and foreign agents in the preparation of filing and prosecution of foreign design patent applications
- Addressing docket actions daily
- Accounting for billable work completed
- Managing and updating tracking documents or software
- Preparing various reports for internal and external use, which typically requires assembling information from multiple sources and presenting data in a usable format
- Other administrative duties and special projects as assigned
You will gain loads of experience in this role, but before you do, you should have:
- At least 3 years of paralegal experience
- Prior experience with patent prosecution in an IP law firm is a plus
- Familiarity with Convention and Non-Convention US and non-US prosecution and formality requirements, in particular, experience preparing and reviewing draft application materials (e.g., ADS, specifications, formal drawings, transmittals, IDS, etc.)
- Demonstrable knowledge and understanding of USPTO rules and practices, including M.P.E.P. Chapter 1500, e-Office Action, use of public/private PAIR and other online USPTO resources
- A strong work ethic and sense of responsibility, reliability, and responsiveness
- Good judgement and resilience under stress of deadlines and demands
- The ability to work in in a fast-paced environment with multiple tasks and projects at hand
- The ability to work in an open workspace with co-workers in close contact
- Self-direction and ability to work independently
- Energy and a desire to troubleshoot problems and find solutions
- The ability to effectively manage workloads to meet deadlines, while delivering high-quality work
- Proficiency with Microsoft Office Suite (Word, Outlook, and Excel); data manipulation and formatting is a must
- Excellent written and verbal communication skills
- Strong organizational skills
- Strong attention to detail
All of our team members have these traits. You should, too:
- Initiative
- Collaboration
- Grit
- Adaptability
- Ownership
While we are still a professional law firm, we want you to like coming to work, so we work very hard to make your time at work fun and different from other law firms.
As a Banner Witcoff IP Paralegal, you can enjoy:
35-hour work week
Opportunities for overtime
Flexible Fridays
Generous medical, vision and dental plans
401(k) plan with annual profit sharing contribution
Business-casual attire
Tuition reimbursement
Charitable firm-wide events
The above list of duties and responsibilities is in no way a comprehensive list. From time to time, the employee may be required to perform other duties in support of the operation of the office, as requested by his/her supervisor or manager.
Banner Witcoff offers a competitive compensation and benefits package, a 35-hour workweek (overtime as necessary), business-casual attire, and a friendly office environment. We have a hybrid environment of in office and remote work. Interested candidates should apply online by sending a resume and cover letter with salary requirements.
Banner Witcoff is an Equal Opportunity Employer and provides employees with a work environment free of discrimination and harassment. The Firm will not discriminate against any applicant for employment because of race, color, religion, national origin, sexual orientation, sex, pregnancy, age, mental or physical disability, genetic information, legal citizenship or any other status protected by law.