Foreign Filing Paralegal (patent prosecution/hybrid)

MERCHANT & GOULD PC; Minneapolis (MN); Hybrid; USD 65,000 - 100,000; Full time

Benefits offered by this job

Competitive salary

Health benefits

401(k) match

Paid holidays

Job summary

Merchant & Gould PC is seeking a Foreign Filing Paralegal to support patent prosecution and foreign filings, including PCT applications. The role may be located in any office and offers a salary range of $65,000 to $100,000.

The position requires organizing foreign patent files, drafting cover letters, and coordinating with foreign associates and attorneys. A BA degree or paralegal certificate and relevant U.S.

Qualifications

• BA degree and paralegal certificate or equivalent experience with some relevant work experience or a minimum of 3 years on-the-job experience with U.S. prosecution filing.
• Ability to work independently and meet critical deadlines under supervision of attorney.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Interpersonal skills necessary to communicate and follow instructions from a diverse group including clients and attorneys.
• Ability to handle more than 37.5 hours per week to perform essential duties.

Responsibilities

• Establishes and maintains foreign patent files: opens files, prepares paperwork for filing including specifications, claims, abstracts, drawings and formal documents.
• Prepares cover letters to foreign associates detailing instructions for filing application.
• Reviews all incoming correspondence from foreign associates for essential docketing and for non-substantive responses due.
• Maintains ongoing verbal and written communication with foreign associates and attorneys during filing and prosecution of foreign patent applications.
• Assists attorney in on-going procedural aspects of prosecution.
• Maintains and updates foreign filing docket.
• Establishes and maintains good working relationship with attorneys and staff.
• Prepares estimates of filing, prosecution and maintenance costs.
• Other tasks and projects as may be assigned.

Skills

Patent filing

Paralegal certificate

Time management

Communication

Education

BA degree or paralegal certificate

Tools

Docketing systems

Job description

About the job

Merchant & Gould, one of the nation's premier intellectual property law firms, is seeking a Foreign Filing Paralegal. This position may be located in any of our office locations. The salary range for this position is $65,000 - 100,000.

Summary of Position (hybrid):

Assists in the preparation, prosecution and filing of Patent Cooperation Treaty (PCT) applications, utility patent, design patent, and utility model (hereinafter generally described as “patent”) applications in foreign countries including research regarding requirements of specific countries.

Responsibilities:

• 1. Establishes and maintains foreign patent files: opens files, prepares paperwork for filing including specifications, claims, abstracts, drawings and formal documents.
• 2. Prepares cover letters to foreign associates detailing instructions for filing application.
• 3. Reviews all incoming correspondence from foreign associates for essential docketing and for non-substantive responses due.
• 4. On-going verbal and written communication with foreign associates and attorneys during filing and prosecution of foreign patent applications.
• 5. Assists attorney in on-going procedural aspects of prosecution.
• 6. Maintains and updates foreign filing docket.
• 7. Establishes and maintains good working relationship with attorneys and staff.
• 8. As appropriate, prepares estimates of filing, prosecution and maintenance costs.
• 9. Other tasks and projects as may be assigned.

Knowledge, skills and abilities required:

• BA degree and paralegal certificate or equivalent experience with some relevant work experience or a minimum of 3 years on-the-job experience with U.S. prosecution filing.
• Ability to work independently and meet critical deadlines under supervision of attorney.
• Ability to organize and prioritize numerous tasks and complete them under time constraints. Ability to concentrate on detailed work for up to 80% of worktime.
• Interpersonal skills necessary in order to communicate and follow instructions from a diverse group, including clients, attorneys and others, and to provide information with ordinary courtesy and tact.
• Work occasionally requires a high level of mental effort and stress while organizing and maintaining multiple cases.
• Work occasionally requires more than 37.5 hours per week to perform essential duties of the job.
• Regular attendance at work.

We are equally committed to providing competitive, affordable health and wellness benefits to help take care of yourself and your family, including: a competitive salary, a comprehensive benefits package that includes employee medical, dental, vision, life, AD&D insurance, short- and long-term disability, 401(k) match, and ten firm holidays.

Merchant & Gould provides equal employment opportunities to all employees and applicants for employment and prohibits discrimination and harassment of any type without regard to race, color, religion, age, sex, national origin, disability status, genetics, protected veteran status, sexual orientation, gender identity or expression, or any other characteristic protected by federal, state or local laws. This policy applies to all terms and conditions of employment, including recruiting, hiring, placement, promotion, termination, layoff, recall, transfer, leaves of absence, compensation, and training. We welcome candidates with disabilities. If you need any accommodation during the application or the recruiting process, please contact our Human Resources Department at 1-612-332-5300.