Patent Paralegal

1 Month ago • 7-10 Years • $74,615 PA - $114,296 PA

Job Summary

Job Description

This Patent Paralegal role involves managing patent forms, documents, and deadlines. Key responsibilities include docketing, record-keeping in the IP management database, preparing and proofreading patent documents for the United States Patent and Trademark Office (USPTO) and the World Intellectual Property Organization (WIPO), filing documents, coordinating tasks with IP Engineers, Patent Attorneys, and Patent Agents. Administrative tasks include receiving and docketing documents, generating workflow tasks, distributing communications, maintaining the IP Management Database, interacting with vendors, and generating reports. Prosecution and filing tasks involve preparing and proofreading forms, electronic filing, assisting with foreign counsel, responding to correspondence, researching patent procedure, drafting transmittal letters, and updating the IP Management Database.

Must have:

Excellent verbal and written communication skills in English
Strong attention to detail and ability to identify errors
Strong familiarity with the patent process
Experience with computer systems and databases
Proficiency with Microsoft Word, Excel, Visio, and Adobe Acrobat
Proficiency with docketing software (FoundationIP preferred)
Experience with Information Disclosure Statements, 37 CFR 1.97, and MPEP 609
American Bar Association Approved Paralegal Certificate or Certified Paralegal
At least 7 years of paralegal experience with a specific emphasis on patents
At least 10 years of docketing experience with emphasis on US patent prosecution
Ability to work independently to complete tasks under time constraints

Perks:

Comprehensive total rewards package (equity, medical benefits, ESPP, 401K, tuition reimbursement, time off programs)

4 skills required

4 skills required for this role

Add these skills to join the top 1% applicants for this job

excel

communication

innovation

proofreading

Job Details

Docketing and record keeping in IP Management Database
Preparation, proofreading, and management of patent forms and documents for filing with the United States Patent and Trademark Office (USPTO) or the International Bureau (IB) of the World Intellectual Property Organization (WIPO)
Filing of patent forms and documents in compliance with the applicable country law either directly or in coordination with counsel/vendors
Coordination and scheduling of tasks between IP Engineers, Patent Attorneys and Patent Agents, and the USPTO or IB

Tasks:

Administrative Tasks:

Receive and docket documents from the USPTO, foreign patent offices, inventors, IP Engineers, and Outside Counsel into IP Management Database
Generating workflow tasks for IP engineers, Patent Agents, and Patent Attorneys in compliance with the applicable rules for the specific document
Receive all external notifications and communications from Outside Counsel, USPTO, WIPO and foreign patent offices and distribute to the correct members of the IP Team
Maintain Power Integrations’ IP Management Database (FoundationIP and DecipherIP) through updating records to reflect the current status of matters
Interact with external patent resource vendors
Generate reports on the status of Power Integrations’ US and Foreign patent portfolio
Manage USPTO deposit account

Prosecution and Filing Tasks:

Preparing and proofreading patent forms and documents, in particular, forms for the USPTO and the IB, including generating appropriate transmittals and office action response shells
Electronic filing documents with the USPTO and the IB
Assisting with patent forms and documents across different jurisdictions to support foreign outside counsel
Independently responding to incoming patent correspondence, when applicable
Working with IP engineers, Patent Agents, and Patent Attorneys to keep abreast of all rules, regulations, and procedures for filing applications, in particular with the USPTO and the IB
Researching patent procedure and providing administrative assistance in the prosecution of patent applications
Drafting transmittal letters and IDS forms for review by in-house Patent Agents and Patent Attorneys
Updating IP Management Database (FoundationIP) in connection with Information Disclosure Statements (IDS), including adding references, marking the references status with the USPTO, managing the relationships between matters to ensure proper reference flow
Manage proofreading of Publications and Issued Patents with external vendor

Requirements:

Excellent verbal and written communication skills in English
Strong attention to detail with superior ability to identify errors in printed documents
Strong familiarity with the patent process
Experience with computer systems and databases
Proficiency with Microsoft Word, Excel, Visio, and Adobe Acrobat
Proficiency with docketing software (familiarity with FoundationIP preferred)
Experience with Information Disclosure Statements, 37 CFR 1.97, and MPEP 609
American Bar Association Approved Paralegal Certificate or Certified Paralegal
At least 7 years of paralegal experience with a specific emphasis on patents
At least 10 years of docketing experience with emphasis on US patent prosecution
Ability to work independently to complete tasks under time constraints

Power Integrations is committed to building teams that drive innovation and therefore review a range of factors when determining compensation. The annual base pay range for this position is $74,615 to $114,296. Our salary ranges are determined by role, level, qualifications and work location.

The range displayed on the job posting reflects the minimum and maximum target for new hire salaries for this position in California. Within the range, individual pay is determined by additional factors, including job-related skills, experience, and relevant education or training.

Power Integrations also offers to our eligible employees a comprehensive total rewards package that includes equity, medical benefits, ESPP, 401K, tuition reimbursement and time off programs. For additional benefits, please visit https://www.power.com/company/our-sustainability-priorities/people-our-engine-innovation.