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Ice Miller LLP is seeking a Patent Paralegal to support attorneys and agents in our Intellectual Property group. This person must be capable of working in a fast-paced environment with time-sensitive materials and maintain strict confidentiality due to the nature of the position.
Essential Job Duties:
•Must be highly knowledgeable of US, PCT, and foreign patent procedure and formality requirements; must have ability to prepare corrective patent documents and handle formalities responses (e.g. updating applicant, correcting filing receipts, responding to Missing Parts and Corrected Papers) with minimal attorney oversight
•Assisting with preparation, filing, prosecution and maintenance of all patent applications and patents (US, PCT, and foreign)
•Knowledgeable of electronic filings via Patent Center, EFS-Web, EPAS, with the USPTO and ePCT with the IB
•Manage worldwide client patent portfolios
•Adept at researching the MPEP for solutions to procedural questions
•Preparing Information Disclosure Statements (IDS); ability to analyze families and related cases to prepare Supplemental IDSs when needed
•Assist with the preparation of routine correspondence to clients and foreign associates
•Preparing foreign filing cost estimates
•Paying maintenance fees and other renewal/annuity costs
•Preparing reports, charts, and/or other lists of patent-related information upon client or attorney request
•Coordinating with attorneys and accounting department to assist with complicated billing inquiries, as needed
•Assisting in due diligence projects as needed
•Proactively manage patent prosecution dockets; monitor and follow-up on dates associated with the US and foreign patent prosecution docket, including clearing dates and providing follow-up with attorneys, clients, and foreign associates in order to provide adequate time to respond
•Provide support to IP team members with special projects and overflow of routine responsibilities
•Maintaining electronic files; ensuring all documents and correspondence are properly stored in the firm’s electronic document management systems
•Maintain positive relations with internal clients and co-workers and contribute to the self-directed team structure to assist with overflow and specialized tasks within guidelines set by the firm
Minimum Requirements:
•High School diploma required
•Minimum of three years of patent administration or paralegal experience, preferably in a law firm
•Additional knowledge of trademark prosecution and/or IP litigation experience is a plus
•Experience with Microsoft Office Suite and Adobe Pro required
•Familiarity with CPi docketing software a plus
•Excellent time management skills and ability to work in high pressure environments; ability to shift priorities quickly without compromising deadlines or quality
•Ability to be proactive and to identify and address problems quickly
•Excellent clerical skills and knowledge of grammar, spelling and punctuation
•Exceptional attention to detail and ability to work independently
•Computer proficient, intermediate or advanced experience using Microsoft Office products such as Word, Excel, and PowerPoint
•Ability to perform all essential duties
Ice Miller is committed to recruiting, developing and retaining talented attorneys and professional staff from all backgrounds. In order to succeed, we take great pride in a culture of inclusion where everyone at Ice Miller feels respected, is treated fairly and has the opportunity to perform at the highest potential. Learn more about Ice Miller’s Diversity & Inclusion efforts on our website.
Ice Miller LLP is an Equal Opportunity Employer.
Candidates must have permanent authorization to work in the United States.
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