Senior Patent Paralegal

About Us

Finnegan is more than just a law firm – we are a powerhouse of innovation and strategy growth. We pride ourselves on providing top-tier intellectual property services globally. Our success is rooted in our emphasis on relationships with our clients and each other. We care about every individual, and it is why many professionals have spent their entire careers at Finnegan.

Role Overview

The Senior Patent Paralegal demonstrates comprehensive knowledge and understanding of U.S. and international patent law and firm procedures to prepare filings, manage deadlines and draft related correspondence. This position is also responsible for monitoring filing deadlines, time entry, editing client bills and processing invoices in accordance with client standards and firm procedures. This position offers two shift options: 9:00 a.m. to 5:30 p.m. or 11:00 a.m. to 7:30 p.m. Candidates applying for the later shift may be eligible for additional scheduling flexibility based on business needs and manager approval.

Responsibilities

• Coordinates U.S. and international patent application filings procedures with attorney by working independently and only seeking attorney input when required to resolve special situations or issues.
• Proactively reviews the docket to ensure that all deadlines are met appropriately, seeks instructions from client (as necessary).
• Provides attorneys with information and/or materials to enable them to meet their responsibilities, including proactively identifying and clearly communicating issues, along potential options for handling addressing the issues, to attorneys.
• Determines, distributes, and ensures compliance with client-specific procedures by serving as a leader and resource for client teams and maintaining close relationships with clients in order to proactively and quickly address changes in procedures or requirements and to address issues.
• Reviews for accuracy reports from USPTO and foreign patent office papers in a timely manner (e.g., office actions) [This may be client specific; meaning, working attorney and secretary may file responses to office actions and report the same to client].
• Independently and proactively prepares formalities associated with USPTO filings, including application papers, responses to Missing Parts, Information Disclosure Statements, Oaths/Declarations, correction of filing receipts, publication requests, assignment recordation, issue fee payment, certificate of correction.
• Drafts correspondence to client, foreign counsel, and others.
• Responds to client and attorney/staff inquiries in a timely manner.
• Coordinates the integration of transferred-in cases into firm system, including communicating with Records and Docket Departments.
• Communicates with client, professional and support staff in a professional manner.
• Maintains complete files in good order.
• Remains current in knowledge of USPTO rules and regulations and/or international practice.
• Opens new matters/new utility/new continuation/divisional/CIP matters.
• Processes invoices.
• Downloads any art cited by patent office examiner and saves appropriately Adheres to best practices for time entry when recording billable and non-billable time in accordance with firm and client standards.
• Forwards substantive matters to working/review attorney (e.g., Office Actions).
• Independently and proactively prepares and instructs foreign counsel for national stage applications; coordinates with foreign counsel to attend to any formalities associated with the filings (e.g. assignments, powers of attorney, priority documents, etc.); works with foreign counsel when issues arise and seeks to find solutions for recommendation to attorneys.
• Specifically identified on the docket for matters assigned to Patent Paralegals.
• Calls examiner or patent office if clarifications are needed or if respective patent sends communications in error.
• Prepares and files new U.S. and national stage applications.
• Prepares and files new PCT applications.
• Prepares and files other responses in the USPTO as required by attorney.
• Prepares monthly client reports without prompting by attorneys or client.
• Maintains complete and accurate database tracking information as directed by client and/or attorneys; generates reports as needed.
• Reviews draft client bills to ensure accuracy of time and disbursement entries, suggests edits to billing attorney; attends to payment of invoices.
• Performs factual research on client, competitors and other topics as directed.
• Attends and participates in patent prosecution and other technological trainings as assigned; may teach or develop materials for training others.
• Completes core training/cross-training, skills assessments and related development as assigned; actively seeks out additional professional development training/experience.
• Embraces new processes and incorporates new technology to meet client demands as they evolve; serves as resource for others on same.
• Mentors, trains, provides guidance, and acts as a resource to other Patent Paralegals and other staff as needed.
• Assumes progressive responsibilities within assigned work as experience is gained in the position.
• Other duties as assigned.

Qualifications

• Bachelor’s degree and minimum of ten years of patent prosecution experience in a professional services environment; OR in lieu of a degree, a minimum of ten years of patent prosecution experience in a law firm environment required
• Must have been at the firm for at least 2 years (this is subject to change if a Senior PPA is being hired laterally and has significant experience, exceeding ten years).
• Demonstrated expert knowledge and solid understanding of international and USPTO (U.S. Patent and Trademark Office) patent law rules, procedures, and requirements
• Ability to navigate USPTO (and/or international patent offices’) website and knowledge of search tools for patent and trademark information and experience elevating issues to appropriate representatives if clarifications are needed
• Strong experience with Electronic Filing USPTO or international procedures
• Ability to prepare and file new U.S. and national stage applications, new PCT applications, and other responses in the PTO as required
• Knowledge of Microsoft Office Suite, including meeting platforms such as Teams and Zoom, and the ability to learn the systems and databases used by the IP operations department and the firm
• Solid experience with case/matter management and/or other database tools and technologies used to manage data and information
• Expert research skills and proficiency in using various research tools, including the Internet and government websites
• Superior interpersonal, oral and written communication skills
• Superior organizational skills and the ability to exercise independent judgment, prioritize assignments, handle multiple projects simultaneously, manage a diverse workload, and meet deadlines in a fast-paced environment
• Must exhibit professionalism and have the ability to work independently and as part of a team

If you are a strategic thinker with a passion for promoting success, we would love to hear from you.

The role can be based out of all our U.S. offices and requires a hybrid/onsite work schedule. The base annual pay range for this role is between $105,000 - $120,000. The base pay to be offered will vary and depend on skills and qualifications, experience, location and will also take into account internal equity. A full range of medical, financial and/or other benefits dependent on the position will also be offered.

Equal Employment Opportunity Statement:

Finnegan is an Equal Opportunity Employer. The firm is committed to providing equal employment opportunities to all applicants for employment, as defined by applicable state and federal laws, without regard to race, color, religion, sex, national origin, ancestry, age, sexual orientation, gender identity or expression, physical or mental disability, medical condition, military or veteran status, genetic information, marital status, pregnancy, childbirth, or related medical conditions, or any other protected status in accordance with all applicable federal, state and local laws. For candidates needing reasonable accommodations or assistance with the application process, please contact Human Resources at View phone number on aiapply.co.

Our privacy policy for applicants can be found here .

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Equal Opportunity Employer