Patent Paralegal

Davis Graham & Stubbs LLP; Denver (CO); Hybrid; USD 60,000 - 90,000; Full time

Job summary

Davis Graham & Stubbs LLP in Denver seeks an experienced patent paralegal to support attorneys across IP services, including portfolio development, prosecution, enforcement, and IP transactions. This role involves U.S. and foreign patent work.

The position requires knowledge of USPTO rules, docketing, and document preparation, with a Bachelor’s degree and 5+ years of patent paralegal experience preferred. A Paralegal Certificate is a plus. Hybrid work arrangement possible.

Qualifications

• Bachelor’s degree or equivalent required; five+ years patent paralegal experience preferred.
• Experience with USPTO and foreign filing processes.
• Strong organization, confidentiality and ability to manage multiple matters.

Responsibilities

• Prepare patent filing documents for USPTO and foreign offices.
• Maintain docket with deadlines and client/foreign communications.
• Review IP search reports and ownership/chain of title issues.
• Prepare IP schedules for corporate transactions and related documents.
• Ensure accuracy in assignment documents and filings.

Skills

Organization

Communication

Attention to detail

Legal research

Mentoring/training

Education

Bachelor’s Degree or equivalent

Paralegal Certificate

Tools

CPI docketing

Job description

About Davis Graham & Stubbs LLP

For over a century, Davis Graham & Stubbs LLP (Davis Graham) has ranked among the region's most prominent law firms, consistently delivering high-quality legal services to emergingand established businesses across the Mountain West. We are the leading independent law firm in our region, offering AmLaw 50 quality at a distinct value - a true differentiator for sophisticated businesses facing major legal challenges within our recognized specialties.

Davis Graham is recognized as the leading firm for middle-market and lower-middle-market M&A, financeand corporate governance work, with particular depth in the energy, private equity, hospitality, and technology sectors. Our litigators hold a dominant position in high-stakes cases across the region, most notably in complex commercial disputes, environmental and energy litigation, and enforcement and investigations.

While our firm's Denver location and intermediate size allow strong, collaborative relationships with local and regional clients, our broad experience and innovative use of technology enable us to partner effectively with businesses and their investors throughout the country and internationally. We are committed to a culture of professional excellence—attracting top-tier talent, investing in our people, and delivering exceptional results for our clients. Davis Graham is a firm defined by a hardworking partnership, an ownership mentality, and a deep commitment to one another and our clients.

Summary

This position supports attorneys in a wide range of IP services, copyrights, licenses, and patents including, but not limited to, portfolio development, patent prosecution, marketplace enforcement, and IP transactions. This position performs both U.S. and foreign patent services.

Essential Functions

• Thorough knowledge of patent procedural requirements and U.S. Patent and Trademark Office (USPTO) practices required
• Understanding of docketing and deadlines and action(s) required
• Maintains a working knowledge of foreign patent law
• Prepares patent filing documents to USPTO and foreign patent offices, template responses for various types of actions on patent matters
• Prepares basic U.S., provisional, non-provisional, international and design application documents, including transmittals, Application Data Sheet and drawings, information disclosure statements and other non-substantive filings
• Reviews and maintains a docket for timely reporting of communications to the client and foreign associates
• Reviews dockets and complaints for active patent litigation; timely processing of various prosecution formalities
• Reviews and analyzes IP search reports, determining maintenance status and ownership of properties, presence of outstanding liens and chain of title issues
• Reviews patent and trademark assignment documents recorded at the USPTO and/or conduct web research to aid in analyzing and clarifying chain of title
• Prepares intellectual property schedules based on an understanding of requirements for various types of corporate transactions
• Communicates with appropriate attorneys and team members about docket issues
• Drafts memoranda summarizing types of IP-related searches conducted, and contents of an IP portfolio and issues relating thereto
• Reviews IP disclosure schedules, drafting list of outstanding issues
• Resolves discrepancies between target company IP disclosures and independent search results
• Completes basic formality documents for national filing requirements, including Powers of Attorney, assignments, and inventor declarations
• Completes legalization of documents, as required
• Orders priority documents, file histories and assignments from the USPTO; obtain foreign priority documents
• Reviews allowed claims, Notices of Allowance, and prepares corresponding checklist
• Maintains confidentiality of all client and firm information
• Maintains billing hours which meet or exceeds the billable hours target of 1600 per year
• Perform other duties as assigned

Required Skills/Abilities

• Ability to organize large volumes of materials and multiple cases
• Ability to learn, interpret, and apply policies and procedures
• Detail oriented and professional demeanor
• Ability to effectively communicate both orally and in writing and work cooperatively with attorneys, staff, clients, coworkers, and vendors
• Ability to act as a peer mentor and assist with training as needed
• Advanced proficiency with, or ability to learn, software programs(s) used by the firm for conflicts and new business intake, recordkeeping, timekeeping and billing, document management and workflow and willingness to attend trainings and develop proficiency when new technologies are rolled out
• Excellent understanding of legal, clerical, and court systems
• Ability to organize and prioritize tasks including delegation of tasks when appropriate
• Extensive knowledge of the roles and function of the assigned department, and any specifically applicable laws or guidelines
• Ability to recreate content based on experience

Supervisory Role

None

Work Environment

This position requires the employee to work in a professional office environment with some ability to work from home. Because the employee will handle sensitive firm and client information, the employee must work from a home office and not a public location during any remote periods. The employee will routinely use standard office equipment.

Physical Demands

The physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job.Reasonable accommodation may be made to enable individuals with disabilities to perform the essential functions.

Prolonged periods sitting at a desk and working on a computer.

Position Type and Expected Hours of Work

This is a full-time, benefits eligible position. Hours are Monday through Friday, 8:00 am to 5:00 pm, with some flexibility in start and end times. Occasional overtime is required.

Required Education and Experience

Bachelor’s Degree or equivalent and a minimum of five years of patent paralegal experience or equivalent, including USPTO and X-US filing experience

Preferred Education and Experience

Notary Public, Paralegal Certificate, experience in docketing systems such as CPI

Other Duties

Please note this job description is not designed to cover or contain a comprehensive listing of activities, duties or responsibilities that are required of the employee for this position. Duties, responsibilities, and activities may change at any time with or without notice.

Salary range is based on orcommensuratewith experience.

Davis Grahamoffers competitive benefits. For a full list of benefits provided, please select this link:Benefits.

Colorado Residents

In any material yousubmit, you may redact or remove age-identifying information such as age, date of birth, or dates of school attendance or graduation. You will not be penalized for redacting or removing this information.

Davis Graham provides equal employment opportunities to all employees and applicants for employment without regard to race, color, religion, gender, sexual orientation, transgender status, gender identity or expression, national origin, age, disability, marital status, genetic information, military status or any other status protected by applicable federal, state or local laws.

Davis Grahamparticipates in the E-Verify program to confirm authorization to work in the United States.