IDS Paralegal

Boston, MA | Direct Hire

Post Date: 03/30/2018 Job ID: 80809 Specialty: Legal & Compliance

A Boston based national firm has an immediate need for an Information Disclosure Statement (“ IDS”) Paralegal to provide specialized patent prosecution support, including client management support as needed, to the Intellectual Property team. Apply today for this wonderful opportunity!

Responsibilities for the IDS Paralegal:
  • Oversee IDS management for assigned client patent portfolios with independent initiative
  • Review daily and weekly docket reports prepared by our Docketing Department
  • Create and maintain complex client IDS matrices in Excel
  • Collect references for citation and prepare IDS forms
  • Prepare and maintain patent family groupings by conducting research for patent family tree information and working with attorneys/patent agents/technical advisors to identify and specify related subject matter in multiple trees for cross-citation purposes
  • Review all incoming U.S. Patent and Trademark Office (USPTO) and non-U.S. patent correspondence in respective client portfolios to assess need for preparation of new IDS’ s in related, co-pending U.S. applications pursuant to IDS matrices
  • Prepare correspondence to foreign associates in jurisdictions with prior art disclosure requirements to ensure complete citation of relevant references based on U.S. IDS citations
  • Prepare client and foreign associate reporting letters in connection with prior art disclosure practice management
  • Interface directly with internal IP client base (assistants/paralegals/docketing/IP management) with respect to all aspects of patent prosecution
  • Maintain internal and client bibliographic databases in connection with patent assets
  • Conduct chain of title research and prepare and maintain chain of title charts
  • Assist with diligence projects, assignment issues, and U.S. and foreign name change projects
  • Prepare patent searches using various firm-subscribed databases and public data
  • Conduct worldwide patent searches, create and update patent family trees and maintain patent portfolio status charts
  • Conduct Patent Term Adjustment (PTA) reviews, prepare Letters of Candor and/or Requests for Reconsideration, as required
  • Conduct audit response polls in connection with periodic requests from clients’ auditors
  • Record time daily and strive to meet billable target
Requirements for the IDS Paralegal:
  • Bachelor’ s Degree
  • 5+ years prior experience managing a patent prosecution docket, including managing complex U.S. IDS practices and non-U.S. prior art disclosures in a law firm
  • Excellent computer skills, including proficiency in using Microsoft Word, Outlook, Excel and PowerPoint
  • Ability to quickly get up to speed and master new applications and software
  • Flexibility to work overtime when necessary
  • Technology savvy with a strong knowledge working with Microsoft Office
  • Strong organizational skills with great attention to detail
  • Strong multi-tasking and prioritizing skills with the ability to meet deadlines
  • Excellent written and verbal communication skills
  • Strong interpersonal skills with a customer service focus
  • Ability to work independently and as part of a team
  • Must be eligible to work in the U.S. without sponsorship                      
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