IP Patent Paralegal; Chemical- Chicago

Overview

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

• 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 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.

• 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).

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

• 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,  protection, long- and short-term disability coverage, 401(k) plan with matching, referral program, and employee assistance programs.

Direct Counsel