Demo

Patent Paralegal

The Fountain Group
South San Francisco, CA Full Time
POSTED ON 1/19/2025
AVAILABLE BEFORE 4/20/2025

Seeking a Patent Paralegal / IDS Specialist II to provide a support in all facets of US Patent Law to three or more patent attorneys in our pharmaceutical client's Legal Department.

Ideal candidates must possess advanced knowledge of Patent and Trademark (PTO) rules and procedures. Candidate must be proficient at navigating Patent Center and Assignment Center.

Strong knowledge of and ability to keep abreast of 37 C.F.R. rules and MPEP rules are essential.

As the IDS Specialist, they will be responsible for ensuring that all relevant prior art, including patents, publications, and other pertinent documents, are identified, analyzed, and properly disclosed to patent offices during the patent application process. They work closely with patent attorneys and other stakeholders to gather necessary information and ensure compliance with patent regulations and procedures.

Responsibilities :

  • Preparing and filing US Patent correspondence, transmittal documents, and formality documents (Declarations and Assignments).
  • Correspond with Foreign Associates and Outside Counsel relating to all Patent Prosecution matters.
  • Generate weekly docket reports and coordinate with attorneys, colleagues, Foreign Associates and Outside Counsel to ensure all deadlines are met.
  • Prepare and manage Information Disclosure statements (US and Israel), including the ability to comprehensively review art cited across large patent family / portfolios.
  • Create, organize and maintain US and foreign patent files (paper and electronic).

Job Requirements :

  • A minimum of 5 years or paralegal experience that includes patent prosecution work is required.
  • High school diploma required. Bachelor’s degree preferred.
  • Experience with biotechnology cases is preferred.
  • Required technical capabilities in Microsoft Word and Adobe Acrobat Professional as well as basic knowledge of Excel and PowerPoint.
  • Experience using the USPTO electronic filing system as well as a patent docketing system (IP manager, CPI, CPA, Anaqua etc.) is required.
  • Experience with First to File, Google Suites, Lecorpio (IDS), and iManage are extremely beneficial.
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