Patent Paralegal
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
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.
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About The Company
Power Integrations competes for the best talent. Our compensation packages consist of salary and equity, and they are commensurate with accomplishment. We offer a full suite of benefits. It is the policy of Power Integrations to provide equal employment opportunity for all employment applicants and employees without regard to prohibited considerations of race, color, religion, gender, gender identity, gender expression, sexual orientation, age, physical disability, mental disability, marital status, or any other classification protected by applicable local, state or federal laws.
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