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Washington, D.C.

    Foreign Filling Paralegal, AmLaw20 - Washington, United States - Plona Partners

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    Description

    Firm: AmLaw50

    Position: Patent Prosecution Paralegal

    Compensation: $85,000 - $105,000

    Onsite Expectations: Hybrid

    Essential Functions

    • Monitor and follow-up on foreign patents, including clearing dates and following-up with attorneys, clients, and management to provide adequate time to respond.
    • Preparing transmittals for and filing U.S. provisional applications and reporting same to internal departments and the client
    • Preparing and filing U.S. non-provisional applications, including initial, continuation and divisional applications, and reporting same to internal departments and the client
    • Work with attorneys in keeping abreast of all rules and regulations and procedures for filing foreign/PCT patent applications including all formalities related thereto.
    • Prepare cost estimates for filing and maintenance of foreign patents.
    • Maintain an understanding of legalization procedures in city, county, state and country; correspond with government, state and embassy officials; and prepare documents including appropriate fees, when necessary.
    • Prepare and transmit applications to foreign agents or government agencies, including entry into National Phase.
    • Receive and act upon client instructions, including confirmation and/or draft response to client inquiries related to foreign filing and formalities of foreign/PCT applications.
    • Draft, proofread, photocopy, scan documents into the firm's document management system and assemble correspondence as needed.
    • Respond to questions and problems from the staff members and attorneys in relation to foreign/PCT filings including US prosecution.
    • Work with firm members to assist in the auditing of transfer-in-matters and completion of transfer-out projects, including file and docket review for foreign matters.

    Skills/Qualifications

    • 5+ years of paralegal experience, specifically with intellectual property law including foreign and US filings, patent docket management and application filings.
    • Bachelor's degree, paralegal certification, or equivalent work experience required.
    • Thorough knowledge and understanding of international patent matters, including US rules of practice.
    • Strong understanding of IP to ensure a high quality and accurate work product.