Paralegal - Intellectual Property (Patent)

Job Summary:

Ice Miller LLP is seeking a Paralegal to support attorneys and agents in our Intellectual Property group. This person must be capable of working in a fast-paced environment with time-sensitive materials and maintain strict confidentiality due to the nature of the position.

• Salary in the range of $75,000 - $120,000 dependent on location and experience level***
  
  
  

Essential Job Duties:

• Assisting with preparation, filing, prosecution and maintenance of all patent applications and patents (US, PCT, and foreign)
• Knowledgeable of electronic filings via Patent Center, EFS-Web, EPAS, with the USPTO and ePCT with the IB
• Manage worldwide client patent portfolios; coordinates domestic and international filings with the USPTO and foreign law offices and/or other foreign entities
• Prepares and files various documents with the USPTO or foreign counsel
• Adept at researching the MPEP for solutions to procedural questions
• Must be highly knowledgeable of US, PCT, and foreign patent procedure and formality requirements; must have ability to prepare corrective patent documents and handle formalities responses (e.g. updating applicant, correcting filing receipts, responding to Missing Parts and Corrected Papers) with minimal attorney oversight
• Preparing Information Disclosure Statements (IDS); ability to analyze families and related cases to prepare Supplemental IDSs when needed
• Prepare and file documentation with USPTO and WIPO, including assignment agreements, change of name filings, and security interests
• Prepares and records assignments
• Prepares correspondence to clients
• Reviews and takes action on correspondence received from foreign associates.
• Obtains legalizations and certifications
• Preparing foreign filing cost estimates
• Paying maintenance fees and other renewal/annuity costs
• Prepares status summary reports for attorneys and clients
• Research and compile information pertaining to national and international patent rights including searches of USPTO records, industry databases and general legal research
• Proactively manage patent prosecution dockets; monitor and follow-up on dates associated with the US and foreign patent prosecution docket, including clearing dates and providing follow-up with attorneys, clients, and foreign associates in order to provide adequate time to respond
  
  
  

Minimum Requirements:

• High School diploma required
• Minimum of 3 years of patent administration or paralegal experience, preferably in a law firm
• Additional knowledge of trademark prosecution and/or IP litigation experience is a plus
• Intermediate to advanced experience with Microsoft Office Suite required
• Familiarity with CPi docketing software a plus
• Excellent time management skills and ability to work in high pressure environments; ability to shift priorities quickly without compromising deadlines or quality
• Ability to be proactive and to identify and address problems quickly
• Excellent clerical skills and knowledge of grammar, spelling and punctuation
• Exceptional attention to detail and ability to work independently
• Experience and familiarity with Adobe Acrobat Pro and DocuSign
• Ability to perform all essential duties
  
  
  

Other Requirements:

The requirements described below are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

Equipment Operated:

This position requires extensive use of a computer and telephone. This position also requires the use of printing, copying, faxing and scanning equipment.

Physical Requirements:

While performing the duties of this job, the employee is occasionally required to sit; stand; talk; see; and hear.

Mental Requirements:

Ability to communicate effectively, verbally and in writing, with a diverse group of people.

Work Environment:

While performing the duties of this job, the employee may be exposed to weather conditions while traveling. The noise level in the work environment is usually moderate.

The above statements are intended to describe the general nature and level of work being performed in this position. They are not to be construed as an exhaustive list of all responsibilities, duties, and skills required of personnel so classified. All personnel may be required to perform duties outside of their normal responsibilities from time to time. Nothing in this job description restricts management’s right to assign or reassign duties and responsibilities to this job at any time.

Benefits provided include: Paid time off, Health insurance, Vision and Dental Insurance, 401k (with an employer match), life insurance, and many others. Please reach out for a comprehensive list of benefits provided.

Ice Miller is committed to recruiting, developing and retaining talented attorneys and professional staff from all backgrounds. To succeed, we take great pride in a culture where everyone at Ice Miller feels respected, is treated fairly and has the opportunity to perform to their highest potential.

Candidates must have permanent authorization to work in the United States.

Ice Miller LLP is an Equal Opportunity Employer.