Intellectual Property Paralegal

*This is a US based remote position*

Introduction to Company 

NovaLaw is a support organization, professionally running the back-office operations of a tech-enabled, highly selective, global law firm consistently recognized for its excellence, innovation, and teamwork throughout its 45 offices in 14 countries and five continents. This disruptive business model has widely become known amongst the most innovative in the legal industry prioritizing collaboration, dynamic innovation, consistent excellence, agility, and efficiency. These core principles provide our firm with an insightful understanding of how we can continue to push our growth year over year.

Position Summary 

The IP Prosecution Paralegal will operate as part of a team of attorneys and staff to provide a high level of service to our clients. The IP Prosecution Paralegal will assist, under the supervision of attorneys, in the preparation, filing, and prosecution, of patent and trademark applications with the US Patent and Trademark Office (USPTO) and Foreign Associates in various countries and regions. 

Essential Functions & Responsibilities 

• Assist attorneys with both U.S. and foreign patent and trademark prosecution matters. 
  • Draft provisional, non-provisional, PCT and design application transmittal documents and file new applications with the USPTO.
  • Draft and coordinate execution of Assignments, Powers of Attorney, and Declarations. Draft Response shells, Preliminary Amendments, Missing Parts Response, Petitions, Request for Extensions of Time, Information Disclosure Statements, Notice of Appeal, Issue fee, Maintenance fee, Requests for corrected documents and performs status checks. File various documents with the USPTO.
  • Draft documents and responses related to PCT Applications, Request, Demand for Preliminary Examination, Response to Defects and Appointments of Agents. Draft and file National and Regional Phase applications in PCT countries and correspond with foreign associates. 
  • Draft US trademark applications, Allegations of Use, and related renewals for US trademark applications for attorney review.

• Coordinate execution of foreign Powers of Attorney and Assignments. 
• Draft Reporting letters and client reminders.
  • Communicate with foreign associates regarding filing and prosecution of patent and trademark applications, renewals and assorted miscellaneous communications. 
• Maintain patent and trademark docket. 

Essential Capabilities 

• Proficiency in MS Word, Outlook, Excel, and PowerPoint 
• Experienced in electronic patent application document filing with the USPTO
• Familiarity with procedures for billable time in time tracking program

• Familiarity with electronic document management systems, iManage a plus 
  • Familiarity with USPTO Trademark databases and e-filing procedures
  • Thorough knowledge of U.S. patent and trademark prosecution procedures and PTO rules and forms, copyright experience a plus
• Familiarity with docketing software, AppColl a plus
  • Ability to perform basic searches of the USPTO and WIPO databases for patent and trademark information
• Familiarity with Smartsheet a plus

Education & Experience 

• Bachelor’s degree or certificate in paralegal studies. 
• Minimum of 10 years IP experience, leadership experience a plus