Patent Legal Assistant

Summary

We are seeking a patent legal assistant with a deep understanding of the patent application process to join our dynamic patent department.  This role requires a strong foundation in both patent prosecution and patent litigation and offers the opportunity to support our Hong Kong and Chicago patent teams.

Essential Duties & Responsibilities

Foreign Docket Management

• Run foreign docket reports and proactively communicate with attorneys regarding U.S. and international deadlines.
• Verify accuracy of docket entries and ensure proper data entry.
• Monitor and communicate with clients daily regarding upcoming foreign application deadlines.
• Generate and distribute foreign order letters for filings based on docket schedules.
• Request priority and certified documents; forward to foreign agents as required.
• Prepare and send foreign annuity due reports to clients.
• Create annuity portfolio reports for all clients and manage direct client communications.
• Forward formal documents to clients for signature and transmit signed documents to foreign agents.
• Monitor foreign docketing in Asia and other time zones; report to foreign offices accordingly.
• Manage file transfers, including preparation of power of attorney forms across multiple jurisdictions and accurate docketing of incoming files.\

Client & Attorney Support

• Prepare customized client docket portfolio reports on an as-needed basis.
• Generate weekly client docketing reports listing all pending actions.
• Track and manage docket dates for attorneys to ensure timely responses.
• Draft reporting letters using client-specific formats.
• Draft office action response shells for attorney review.
• File patent applications and office action responses with the USPTO.
• Forward incoming USPTO correspondence to clients in the required format for internal docketing.
• Process client instructions and relay them to the appropriate team members.

Corporate and Litigation Support

Corporate Transactions Support

• Identify and reconcile unlisted intellectual property during corporate transactions.
• Verify chain of title, lien status, application status, and annuity payments for IP assets.
• Prepare and file global IP assignments in accordance with transaction requirements.

Litigation Support

• Verify case citations and confirm case law is valid.
• Assist with creating filing documents and exhibits.
• Court filings and maintain case calendar.

Specific Skills, Knowledge & Abilities Required

• Proficiency in Microsoft Office Suite, Outlook, and iManage.
• Effective written and verbal communication skills.
• Proven ability to work collaboratively across multiple teams and time zones.
• Strong organizational and time management skills.
• Detail-oriented with a commitment to high-quality work.
• Excellent analytical and problem-solving skills with the ability to assess issues and implement effective solutions.
• Ability to work well under pressure in a fast-paced, deadline-driven environment.
• Flexible, dependable, and maintains a positive, professional attitude.
• Demonstrated ability to maintain confidentiality and handle sensitive information with discretion.

Education and/or Experience

•    Minimum of 5 years experience with patent applications preferably within mid to large size firms. 

Physical Demands

•    Prolonged periods of sitting or standing at a workstation with monitor for extended periods of time.
•    Able to travel to various floors to pick up and drop off work assignments.
•    Must be able to lift 15 pounds at times.