What are the responsibilities and job description for the Intellectual Property Paralegal position at The Mom Project?
Core Responsibilities
- Assist in the preparation and filing of PCT, national stage, provisional, non-provisional, and trademark applications
- Review and electronic filing of Responses to Office Actions
- Prepare documents and coordinate with inventors/clients to obtain executed documents for filing (i.e., Assignments, Oaths/Declarations, and Powers of Attorney)
- Correspond with foreign counsel and clients on a daily basis regarding formalities documents, prosecution, and renewal (maintenance/annuity) payments
- Review, preparation, and filing of prior art and Information Disclosure Statements
- Maintain formalities of applications and review applications to ensure formality requirements are met before applications proceed to allowance
- Correspond with clients to obtain and e-file Statements of Use (Section 8 & 15 Affidavits)
- Draft reporting correspondence regarding prosecutorial developments
- Prepare dockets and I.P. listings for clients and attorneys
- Proofread publications, Letters Patent, Trademark Certificates – prepare and e-file required forms for correcting errors
- Review and file documents with the U.S. Federal Circuit via CM/ECF
- Utilize USPTO Patent Center, TSDR, WIPO, E-Space, and foreign databases to perform routine status checks of patent and trademark applications
- Assist in the preparation of trademark clearance searches
- Review incoming and outgoing communications to ensure deadlines are docketed accordingly
- Maintain client billing
- Contact USPTO regarding case status, formality-related issues, and incoming communications
- General file and database maintenance
- Organization, attention to detail and time management
- Excellent written and oral communication skills
- Ability to follow-up as necessary to ensure deadlines are met
- Strong proficiency in Microsoft Office and Adobe applications
- Working knowledge and experience with the USPTO databases and filing systems, EPO database (e.g. Espacenet), WIPO and E-PCT filing system is a plus
- Experience with docketing systems, although not necessary, is a plus
- In-depth knowledge of US and foreign patent procedures, rules and requirements is preferred
- AI proficiency and use is not necessary
- BA/BS degree or Paralegal certificate is preferred
- 401(k)
- Dental insurance
- Health insurance
- Paid Time Off
- Paid Sick Leave