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Patent Prosecution Paralegal (5044)

Designation: Direct Hire Category: Legal Location: Austin, TX
Salary: DOE Job Code: 5044  

Job Description:

Austin area law firm has a great opportunity available for an experienced Patent Prosecution Paralegal.  This position works under the supervision of the responsible attorneys and/or patent agents to prepare and file patent applications
and follow-on documents at the United States Patent and Trademark Office (USPTO).
• Prepare and file new patent applications, i.e. utility, continuation, divisional, and reissue
applications, including any additional essential documents with the USPTO.
• Review and proofread documents from the USPTO (including Official Filing Receipts, Notices of
Publication, Notices of Recordation, and Issue Notifications) and report those documents
directly to the client.
• Handling of all associated formalities after filing new applications to include, but not limited to:
prepare formal documents such as Declarations, Substitute Statements, and Assignments;
Responses to Missing Parts; prepare and file Information Disclosure Statements (IDS); review
and process Notices of Allowance; prepare and file Issue Fee payment; and review of Official
Patent Grant.
• Monitor and satisfy client-specific dockets.
• Research client inquiries and patent-specific inquiries.
• Keep attorneys informed of the status of applications.
• Perform research and compile data as requested by attorneys or agents.
• Update and revise case databases in NetDocs and/or the Extranet.
• Various other tasks as requested/needed. 


• A minimum of 5+ years’ experience providing intellectual property prosecution support in a law
firm environment.
• Knowledge of foreign and PCT patent practice is preferred but not required.
• College degree or comparable paralegal experience is required; paralegal certificate preferred.
• Thorough knowledge of USPTO rules and practices, including knowledge of PAIR and e-filing.
• Ability to meet the Firm’s billable hours requirement while maintaining excellent service and
producing consistently high quality work product that meets or exceeds the Firm’s quality
• Excellent data entry and organizational skills.
• Strong analytical and problem solving skills; ability to plan, organize, prioritize, and coordinate
• Ability to use good judgment, initiative, and command of resources to accomplish results
• Ability to work well as a team member.
• Strong interpersonal skills to communicate and follow instructions effectively from a diverse
group of clients, attorneys, and staff and to provide information with courtesy and tact.
• Ability to multitask and work independently.
• Flexibility and ability to prioritize a continually changing workload.
• Ability to work well under pressure and be self-motivated.
• Ability to type at least 60+ wpm accurately.
• Proficiency with MS Office Suite is a must. 

Becky Barclay