Sr. IP/Patent Paralegal

Administration and OperationsAll Practice AreasPittsburgh, PA

Job Description

At K&L Gates, we are looking for smart, imaginative and hard-working people with diverse backgrounds, experiences and ideas to join us.  Perhaps our search for talented visionaries and your search for important and impactful work lead to the same place.

The global law firm of K&L Gates LLP seeks an experienced Intellectual Property paralegal for its Pittsburgh office. The Intellectual Property paralegal will be responsible to assist, under the direct supervision of lawyers, in the preparation, prosecution and maintenance of patents and patent applications, trademark registrations and applications and domain names. The paralegal will operate as a part of a team of lawyers and support staff to provide a high level of service to our clients. 

Responsibilities:
•Prepare all documents for filing; review new patent and trademark applications (including CONs, DIVs and CIPs); prepare filing materials such as utility and fee transmittals, application data sheets and requests for non-publication (US/foreign).
•Upload and file all filing, application, amendment, issuance, assignment, maintenance and other materials.
•Prepare IDSs for submission to USPTO including preparation and maintenance of extensive schedules to assist in the cross-citation of references among related applications, determine art to be cited; obtain foreign references, publications, translations of non-English.
•Effect national phase entry of PCT applications, and prepare and file continuing applications.
•Manage interaction with foreign associates regarding the client's intellectual property, including review of correspondence from foreign associate or client, determine course of action, and prepare instruction letters and other responses where appropriate for foreign associates.
•Search USPTO for status of pending applications, issued patents/registered trademarks, patent re-examinations, maintenance fee payments, details to calculate patent expiration, first office action prediction, and assignments.
•Utilize Internet-based research sources including USPTO, ESpaceNet, WIPO, US Copyright Office, Courtlink, Delphion, INPADOC, LexisNexis, PACER, Derwent Innovation, SAEGIS as well as other services relevant to this practice..
•Relative to patents and trademarks, perform advanced on-line searches of industry databases and general legal research as well as conduct due diligence and summarize findings, update research as needed.
•Review docket for deadlines, understand docket and deadlines and action needed on each file; inform responsible lawyer(s) of deadlines, file status inquiries to determine status of application.
•Assist in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding Letters Patent.
•Process payment of Issue Fees.
•Track and perfect chain of title in U.S. patents.
•File and assist in prosecution of design applications; conduct litigation-based searches including dockets, pleadings, case law and citations-summarizes findings.
•Effect portfolio transfers.

Skills/Qualifications:
•Qualified candidates typically have an undergraduate degree and must possess strong organizational, communication, writing and research skills.
•Advanced knowledge and understanding of rules and procedures of the USPTO, EPO, PCT, WIPO and other national and international governing bodies.
•Experience in on-line IP database searching (especially USPTO’s patent databases, PAIR).
•Previous and direct use of docketing software is a plus.
•Effective written and oral communication skills.
•High attention to detail.
•Excellent organizational skills, including the ability to work productively under pressure, manage multiple priorities, track extensive deadlines.
•Proficiency with technology including Microsoft office suite applications, specifically Word, Excel, Adobe.
•Must be willing to take initiative to ensure completion of tasks.
•Flexible, proactive, team player.

ABOUT THE FIRM

K&L Gates is a fully integrated global law firm with approximately 2,000 lawyers across five continents. We have experienced dramatic growth in the past decade and now rank among the largest U.S. based law firms in the world.  We take pride in constantly striving for innovation, imagination and an entrepreneurial spirit. We come up with big ideas and then roll up our sleeves to get the job done, guiding our clients through their most complex issues in a variety of industry sectors and across multiple regions of the world.

The industry recognition the firm has garnered in the past five years emanates from the foundation of a global community aligned on behalf of our clients. The people at K&L Gates are committed to working together to create a legacy for each other, the firm, our clients, and the communities in which we serve. We thrive in an inclusive and socially conscious environment that embraces diversity and takes a holistic approach to the career evolution of all our professionals.

For more information or to view other job opportunities, please click here to go back to our careers page.

Notice: We participate in E-Verify in certain Firm locations for purposes of verifying employment eligibility.

BENEFITS

We offer a dynamic work environment and excellent benefits.

EQUAL EMPLOYMENT OPPORTUNITY

The Firm is an equal opportunity employer. It is the policy of the Firm that employment decisions shall be based on merit, qualifications and competence. Employment practices shall not be influenced or affected by virtue of a person’s race, color, religion, sex, national origin, age, sexual orientation, gender identity or expression, marital status, disability, military status or any other characteristic protected by applicable law. This policy governs all aspects of employment including, without limitation, recruiting, hiring, compensation, benefits, promotion, assignment and dismissal. In addition, it is the Firm’s policy to provide an environment that is free of unlawful harassment of any kind including, without limitation, that which is sexual, racial, age-related, disability-related or ethnic background-related.