Paralegal - Patent - Minneapolis, MN, United States - Winthrop & Weinstine

Description

Winthrop & Weinstine is a leading corporate law firm that believes in putting clients first, culture second and paving our own path forward. We bring perspective, insight and a whole lot of hustle to protecting and propelling our clients' business. Through a culture of fresh thinking, we put the law to work.

Winthrop & Weinstine is seeking a Paralegal to provide support to our Patent Group. The responsibilities for this position will include, but not limited to:

• Collaborate with attorneys, other firm members, and clients to file, prosecute US, PCT, and foreign patent applications including National Phase, Direct National, Utility, Continuation, Divisional, CIP, and Provisional.
• Educate clients & firm members on a variety of prosecution needs such as country law updates, pilot programs, & foreign filing strategy.
• Preparation & filing of US patent prosecution documents including all aspects of initial application filings, Preliminary Amendments, Missing Parts/Requirements responses (Declaration, Power of Attorney, Sequence Listing, Replacement Drawings, Substitute Specifications), Assignments, Information Disclosure Statements, retrieving references; review & preparation of responses to Restriction Requirements, Office Actions, & Appeals; final review of entire file history corresponding to issuance of Notice of Allowance, payment of Issue Fee; preparation & filing of corrections on Filing Receipts & Assignment Recordations, other special requests.
• Prosecution of PCT applications including review and response to all incoming documents from the RO, IB, ISA, & IPEA.
• Preparation & coordination of filing for foreign direct national & national phase patent applications. Correspondence with foreign counsel at all stages of prosecution. Review & recitation of foreign IP laws & requirements to clients. Review of all incoming correspondence from foreign associates for deadlines and other requirements to progress applications.
• Manage patent docket deadlines, ensure all filings are completed in a timely manner, and maintain updated information on patent applications; oversee outsourced docketing functions, perform docketing and file management.
• Preparation of docket reports & discussions with clients and firm members regarding deadlines & requirements in the US & worldwide.
• Communicate effectively with inventors, clients, and foreign counsel to ensure the smooth progression of patent matters.
• Handle administrative tasks such as managing files, organizing documents, and maintaining electronic and physical records.

• A minimum of three years of experience as a Patent Paralegal, preferably within a law firm or corporate legal department.
• Experience with USPTO and PCT filings, as well as common international rules and procedures.
• Excellent communication skills, both written and verbal.
• Proficiency in using patent database software and document management systems.
• Experience with Foundation IP docket management software a plus.
• Ability to work independently and collaboratively in a team-oriented environment.
• Strong organizational skills and attention to detail, including the ability to prioritize multiple projects and meet deadlines.
• Paralegal certificate or Bachelor's degree is preferred.

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