Patent Paralegal

September 6, 2023
Chicago, Illinois
Job Type


Trustpoint One is assisting a top law firm in its search for a Patent Paralegal to work in the firm’s Chicago office.

Patent Paralegal Responsibilities:

-             Assist 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

-           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

-           Prepare 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

-           Prepare foreign filing cost estimates

-           Pay maintenance fees and other renewal/annuity costs

-           Prepare reports, charts, and/or other lists of patent-related information upon client or attorney request

-           Coordinate with attorneys and accounting department to assist with complicated billing inquiries, as needed

-           Assist 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

-           Maintain 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


-           Bachelor’s Degree. Paralegal certificate is a plus

-           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.

Qualified candidates should submit a resume in Word format.

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