QUALIFICATIONS AND EXPERIENCE

Required Qualifications: At least 5+ years working as a Patent Prosecution Paralegal.

EDUCATION

Required: Bachelor’s Degree or 5+ years of relevant work experience in an Intellectual Property setting.

COMPUTER/SOFTWARE KNOWLEDGE

Required: Microsoft Suite including Outlook, Word, Excel
Preferred: First to File and FoundationIP

TRAVEL REQUIREMENTS

Up to 10% travel occasionally to nearby office if based in San Francisco or Silicon Valley.
California: The pay range for this position is $51.00 to $76.00 per hour.

LI-CW1 #LI-Hybrid #LI-Associate #LI-Fulltime

We will consider qualified applicants with criminal histories in a manner consistent with all applicable federal, state, and local laws, including the San Francisco Fair Chance Ordinance and the Los Angeles Fair Chance Initiative for Hiring Ordinance.
Sheppard Mullin is an equal opportunity employer and does not discriminate on the basis of race, color, religion, sex, sexual orientation, gender identity and/or expression, national or ethnic origin, ancestry, citizenship, age, marital status, protected medical condition, physical or mental disability, veteran status, or any other characteristics protected by law

RESPONSIBILITIES:

• Independently file patent applications with the USPTO
• Manage the docket
• Prosecute infringements
• Research across patent databases
• Ensure that client-matter numbers are opened according to the Firm’s guidelines.
• Timely review and forward annuity and maintenance fee information to the annuity team, and send foreign attorney invoices to the accounting department.
• Prepares supporting documents for attorneys including, but not limited to, the following:
• US and PCT application filing papers
• US formal documents, including Declarations, Assignments, and Powers of Attorney
• US prosecution papers, including Information Disclosure Statements, SB08’s, Responses to Missing Parts, Responses to Office Actions, Petitions, Issue Fee papers, and other USPTO forms
• Routine foreign prosecution documents such as PCT and direct national patent application filing papers, Authorization of Agents, Priority Documents, Assignments, and all other foreign formalities forms
• Reporting, reminder and instruction correspondence to clients
• Instruction correspondence to foreign associates
• Patent Status Charts
• Contacts USPTO, WIPO and foreign associates regarding status of applications
• Works with Docketing Paralegal and attorneys and agents on managing the dockets and advising of deadlines; prepares and distributes docket or other status reports as directed
• Reviews and organizes patent documents and files; ensures emails and documents are properly filed in NetDocs according to filing protocols
• Coordinates Sequence Listings, Formal Drawings and Legalization of Documents with outside vendors
• Works with supervisor and other patent staff on forms, prosecution manual, or other processes associated with Patent Practice Management
• Performs special projects as assigned, particularly IP Due Diligence projects.
• Records time for billing and statistical purposes
• Performs any and all other duties as necessary and as assigned by your supervisor for efficient functioning of the Department, Office, and Firm

ESSENTIAL FUNCTIONS OF JOB:

• Prepare and file U.S. patent applications and responses, both electronically and paper (including preparation and review of necessary filing documents);
• Establishes and maintains patent files: open files, prepares formal documents for filing, including, abstracts, drawings and preliminary amendments.
• Draft correspondence to clients regarding status of applications and patents, including reporting of filing receipts for applications, publication notices and forwarding patent certificates
• Review and manage files and docket for deadlines, understand docket and deadlines and action needed on each file
• Assist in patent filing strategy discussions and due diligence
• Communicate with appropriate attorneys and team members about docket
• Act as a single point of contact for the client and providing assistance with incoming files to ensure accuracy and completeness
• Prepare and file Information Disclosure Statements; Ensuring timeliness, accuracy and consistency in work product
• Maintain accurate daily time records for client billing purposes
• Reviews all incoming correspondence from foreign associates for essential docketing and for non-substantive responses due in connection with filing of applications.