Patent Paralegal II

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Washington (District of Columbia); On-site; USD 70,000 - 95,000; Full time

Job summary

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, DC, seeks a Patent Paralegal II to support the IP Operations team with filing preparations, deadlines, and related correspondence for patent applications.

You will handle responses to USPTO notices, prepare Information Disclosure Statements for US/international patents, and assist with office action responses, fee processing, and document management, while mentoring others and staying current in patent practice.

Qualifications

• Bachelor’s degree and 3+ years patent prosecution experience; or 5+ years without degree.
• Knowledge of international and USPTO patent rules and procedures.
• Ability to navigate USPTO website and search tools for patent/trademark information.
• Experience with Electronic Filing USPTO procedures.
• Strong communication and organizational skills.
• Ability to work independently and as part of a team.
• Proficiency with Microsoft Office and collaboration tools.

Responsibilities

• Prepares responses to USPTO notices and office actions, information disclosure statements, issue, and publication fees.
• Reviews files and prepares Information Disclosure Statements for U.S. and international patent applications.
• Prepares shell amendments for use by attorneys in preparation of proposed responses to outstanding office actions.
• Performs database input and maintenance.
• Calculates Patent Term Adjustments.
• Prepares/loads USPTO forms for electronic filing to include designating correct document types and formats, fee types, and ensuring credit and payment of fees.
• Creates and maintains Notice of Allowance checklists.
• Submits Certificate of Corrections and Priority Document requests.
• Researches and locates files as requested by staff and attorneys.
• Accurately and timely reconciles and processes invoices and other financial documents in accordance with firm procedures.
• Mentors, trains, provides guidance, and acts as a resource to Patent Paralegal Is, and other staff as needed.
• Completes core training/cross-training, skills assessments and related development as assigned.
• Utilizes appropriate resources to stay current and maintain proficiency in patent prosecution areas of practice.
• Embraces new processes and incorporates new technology to meet client demands as they evolve.
• Completes and actively seeks out professional development training/experience and demonstrates the ability to assume progressive responsibilities within assigned work as experience is gained in the position.
• Other duties as assigned.

Skills

Communication

Organization

Independent/Teamwork

Time management

Research skills

Problem solving

Education

Bachelor's degree

Tools

MS Office

Teams/Zoom

IP research tools

USPTO filing tools

Job description

About Us

Finnegan is more than just a law firm – we are a powerhouse of innovation and strategy growth. We pride ourselves on providing top-tier intellectual property services globally. Our success is rooted in our emphasis on relationships with our clients and each other. We care about every individual, and it is why many professionals have spent their entire careers at Finnegan.

About Us

Finnegan is more than just a law firm – we are a powerhouse of innovation and strategy growth. We pride ourselves on providing top-tier intellectual property services globally. Our success is rooted in our emphasis on relationships with our clients and each other. We care about every individual, and it is why many professionals have spent their entire careers at Finnegan.

Role Overview

Patent Paralegal II will assist the IP Operations team with administrative tasks, including preparation of filings, managing deadlines, and drafting related correspondence needed for filing patent applications.

Responsibilities

• Prepares responses to USPTO notices and office actions, information disclosure statements, issue, and publication fees.
• Reviews files and prepares Information Disclosure Statements for U.S. and international patent applications.
• Prepares shell amendments for use by attorneys in preparation of proposed responses to outstanding office actions.
• Performs database input and maintenance.
• Calculates Patent Term Adjustments.
• Prepares/loads USPTO forms for electronic filing to include designating correct document types and formats, fee types, and ensuring credit and payment of fees.
• Creates and maintains Notice of Allowance checklists.
• Submits Certificate of Corrections and Priority Document requests.
• Researches and locates files as requested by staff and attorneys.
• Accurately and timely reconciles and processes invoices and other financial documents in accordance with firm procedures.
• Mentors, trains, provides guidance, and acts as a resource to Patent Paralegal Is, and other staff as needed.
• Completes core training/cross-training, skills assessments and related development as assigned.
• Utilizes appropriate resources to stay current and maintain proficiency in patent prosecution areas of practice.
• Embraces new processes and incorporates new technology to meet client demands as they evolve.
• Completes and actively seeks out professional development training/experience and demonstrates the ability to assume progressive responsibilities within assigned work as experience is gained in the position.
• Other duties as assigned.

Qualifications

• Bachelor’s degree and minimum of three years of patent prosecution experience in a professional services or law firm environment; OR in lieu of a degree, a minimum of five years of patent prosecution experience in a law firm environment required.
• Demonstrated knowledge and understanding of international and USPTO (U.S. Patent and Trademark Office) patent law rules, procedures, and requirements.
• Ability to navigate USPTO website and demonstrated knowledge of search tools for patent and trademark information.
• Experience with Electronic Filing USPTO procedures.
• Knowledge of patent prosecution concepts and ability to apply concepts to the appropriate assignments.
• Knowledge of Microsoft Office Suite, including meeting platforms such as Teams and Zoom, and the ability to learn the systems and databases used by the IP operations department and the firm.
• Advanced research skills and proficiency in using various research tools, including the Internet and government websites.
• Strong interpersonal, oral, and written communication skills.
• Strong organizational skills and the ability to exercise independent judgment, prioritize assignments, handle multiple projects simultaneously, manage a diverse workload, and meet deadlines in a fast-paced environment.
• Must exhibit professionalism and have the ability to work independently and as part of a team.

If you are a strategic thinker with a passion for promoting success, we would love to hear from you.

Available to all U.S. Office locations. The base annual pay range for this role is between $70,000 - $95,000. The base pay to be offered will vary and depend on skills and qualifications, experience, location and will also take into account internal equity. A full range of medical, financial and/or other benefits dependent on the position will also be offered.

Equal Employment Opportunity Statement

Finnegan is an Equal Opportunity Employer. The firm is committed to providing equal employment opportunities to all applicants for employment, as defined by applicable state and federal laws, without regard to race, color, religion, sex, national origin, ancestry, age, sexual orientation, gender identity or expression, physical or mental disability, medical condition, military or veteran status, genetic information, marital status, pregnancy, childbirth, or related medical conditions, or any other protected status in accordance with all applicable federal, state and local laws. For candidates needing reasonable accommodations or assistance with the application process, please contact Human Resources at 202.216.5400.

Our privacy policy for applicants can be found here.

Equal Opportunity Employer