Patent Paralegal

Direct Counsel is representing an AmLaw 100 firm seeking an experienced Intellectual Property Patent Paralegal to support their Chemical Sciences Practice Group.

Position Locations: Chicago, Edwardsville, St Louis, Kansas City

The ideal candidate will work onsite and have experience managing high-volume patent portfolios, strong technical knowledge of patent prosecution, and the ability to manage multiple projects simultaneously.

Core Responsibilities:

• Manage docket and patent prosecution practice for assigned global client portfolios, ensuring deadlines and filings are accurate and timely.
• Review, prepare, and file patent prosecution applications and supporting documentation with the U.S. Patent and Trademark Office (USPTO) and/or WIPO, as well as handle international patent filing requests for various countries.
• Prepare and file multiple patent application types, including Provisional, Non-Provisional, Track 1, Design, PCT, US National Stage, and Convention filings, coordinating international filing responsibilities as needed.
• Prepare and file various documents, including Notice to File Missing Parts, Foreign Signature Documents, Formal Documents, Responses to Office Actions, Issue Fee Transmittals, and Information Disclosure Statements (IDS).
• Review incoming correspondence from USPTO, WIPO, and international associates regarding patent applications, including Official Filing Receipts, Publications, Notifications, Assignments, Notices of Allowance/Acceptance, and Letters Patent. Ensure the accuracy of all information and prepare corrective documents when necessary.
• Maintain and update IDS charts and client portfolio spreadsheets; prepare and maintain reports for clients regarding application and patent status.
• Update internal and client dockets, sending reminders to attorneys, international counsel, and clients as needed.
• Provide project management support and handle substantive tasks for multiple high-tech IP cases or portfolios.
• Conduct research and compile data as requested, assisting attorneys with strategic planning and case management.
• Maintain case and file management, including uploading communications and documents to docketing and DMS systems, updating client portals, and attending status meetings.

Skills and Qualifications:

• Strong knowledge of USPTO, PCT, and international patent rules and procedures.
• Proficient in filing with USPTO and ePCT.
• Knowledge of Chemical Formulas and Sequence Listing.
• Strong understanding of IP docket management and deadlines, including maintenance of Secondary Docket.
• Exceptional attention to detail, organizational skills, and ability to prioritize multiple projects.
• Excellent verbal and written communication and interpersonal skills, with the ability to interact effectively with clients, attorneys, USPTO personnel, and international counsel.
• Proficiency in Microsoft Word, Excel, PowerPoint, Outlook, Adobe, and docketing software (CPi preferred).

Requirements:

• 5+ years of IP experience, supporting pharmaceutical portfolios and university clients.
• Docketing knowledge and experience, preferably with CPi software.
• Paralegal Certificate required.

Compensation and Benefits:

• Salary: $110,000 – $150,000 per year, based on experience.
• Work Arrangement: Onsite
• Benefits: Comprehensive benefits package including paid time off, sick leave, medical, dental, and vision insurance, life and AD&D coverage, ID theft protection, long- and short-term disability coverage, 401(k) plan with matching, referral program, and employee assistance programs.