Foreign Filing Paralegal

Proskauer Rose LLP; New York (NY); On-site; USD 90,000 - 120,000; Full time

Job summary

Proskauer Rose LLP seeks an IP Foreign Filing Paralegal to support patent filings globally, maintain foreign docketing, and coordinate with foreign associates through examination. The role reports to the Manager of IP Prosecution Services and requires staying current on US, PCT, and foreign rules.

Requirements include a Bachelor’s Degree and at least three years of foreign filing experience in a law firm, with life sciences patent prosecution preferred.

Qualifications

• Bachelor’s Degree required.
• At least 3 years foreign filing experience in a fast-paced law firm.
• Life sciences patent prosecution experience strongly preferred.
• Detail-oriented with ability to manage multiple tasks and deadlines.
• Ability to protect and maintain highly confidential information.
• Work independently and escalate concerns when needed.
• Excellent written and verbal communication skills.
• Team player with a positive attitude.
• Proficiency with MS Word, Excel, and patent docketing software; ePCT and Foundation IP a plus.
• Experience with PatDocs, Derwent, and TotalPatent One a plus.
• Willingness to work overtime.

Responsibilities

• Prepare and file patent applications in foreign jurisdictions (PCT, Paris Convention, national phase).
• Use ePCT to prepare electronic international application packages for filing.
• Prepare instructions to foreign associates outlining client instructions.
• Review and maintain docket of deadlines for foreign filings and related formalities.
• Coordinate with outside vendors for translations, drawings, and legalization as needed.
• Prepare draft estimates for stages of foreign prosecution (direct or PCT to regional validations).
• Manage large name change projects in multiple jurisdictions.
• Review patent schedules and verify information against patent office databases.
• Serve as primary contact for foreign associates from filing to examination requests.
• Timely report incoming foreign mail and filed documents to clients.
• Coordinate status of transferred applications and notify associates of changes.

Skills

Attention to detail

Time management

Communication skills

Independent worker

Education

Bachelor’s Degree

Tools

ePCT

Foundation IP

PatDocs

Derwent

TotalPatent One

MS Word

MS Excel

Job description

The world’s leading organizations and global players choose Proskauer to represent them when they need it the most. With 800+ lawyers in key financial centers around the world, we are known for our pragmatic and business-savvy approach.

Proskauer is the place to turn when a matter is complex, innovative, and game-changing. We work seamlessly across practices, industries and jurisdictions with asset managers, private equity and venture capital firms, Fortune 500 and FTSE companies, major sports leagues, entertainment industry legends and other industry- redefining companies. We are proud of our many achievements across a full spectrum of transactional and contentious practices.

The IP Foreign Filing Paralegal will provide support to clients, attorneys, paralegals and secretaries in all aspects of patent foreign filing, U.S. National Stage, and U.S. Bypass Continuation Application Filings. They must remain current on all U.S., PCT and foreign patent rules and rule changes in national offices. The Foreign Filing Paralegal will report directly to the Manager of IP Prosecution Services.

Responsibilities

• Prepare and submit patent filings in all foreign jurisdictions, including PCT, Paris Convention, and national phase filings.
• Use ePCT to prepare electronic international application packages for filing with the U.S. Receiving Office or, when appropriate, filing directly with the International Bureau.
• Prepare instructions to foreign associates outlining our clients’ instructions for both direct and national phase patent applications.
• Review and maintain docket of associated deadlines for assigned clients, including but not limited to management and tracking of all aspects of foreign formalities associated with filing.
• Coordinate with outside vendors to handle foreign formalities, e.g. translations, formal drawings, and apostille/legalization as necessary to comply with country law requirements.
• Prepare draft estimates for various stages of foreign prosecution from direct or PCT filing to Regional Validations stage.Knowledge of Global IP Estimator a plus.
• Manage large name change projects in multiple jurisdictions.
• Review large patent schedules and confirm information against foreign patent office databases.
• Serve as the primary contact for foreign associates from first filing to request for examination.
• Timely report incoming foreign mail and as-filed documents to clients.
• Coordinate the status of transferred applications and notify foreign associates of bulk changes to the assignee, docket numbers and attorney assignments.
• Prepare and file disclosure documents in relevant copending applications and understand the rules of disclosure in foreign jurisdictions.
• Keep current with changes in foreign country law.

Qualifications

• Bachelor’s Degree
• A minimum of 3 years of foreign filing experience in a fast-paced law firm environment
• Experience with life sciences-based patent prosecution strongly preferred
• Strong attention to detail and ability to manage multiple tasks simultaneously and meet deadlines with minimum supervision
• Sound judgment and ability to respect, protect and maintain highly confidential and sensitive information
• Ability to quickly and proactively identify problems and develop solutions
• Work independently and escalate concerns when needed
• Excellent interpersonal, organizational and communication skills, and ability to communicate effectively, both written and verbal
• Must work well in team environment and maintain a positive team atmosphere
• Strong technical skills in Microsoft Word, Excel, and patent docketing software; ePCT and Foundation IP experience a plus
• Experience working with PatDocs, Derwent, and TotalPatent One is a plus
• Willingness and flexibility to work overtime as needed

This position will require physical presence in Proskauer’s offices on a regular basis (at least 3x per week, or more, if it becomes the policy of the Firm or as business needs require). The anticipated compensation range for this position is $90,000 - $120,000. The actual salary offered will be based on a number of factors including but not limited to the qualifications of the applicant, years of relevant experience, level of education attained, certifications or other professional licenses held, and if applicable, the location in which the applicant lives and/or from which they will be performing the job.

Proskauer is committed to providing a work environment that includes equal opportunity without regard to race, color, gender, age, creed, sex, religion, national origin, disability (physical or mental), marital status, citizenship, ancestry, sexual orientation, gender identity and gender expression, or any other legally protected status.