HG Law LLP
Temporary Mid-level Patent Filing Paralegal
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The Patent Paralegal – London
The Patent Paralegal – London provides patent prosecution support through the preparation and submission of applications and documents to the European Patent Office (EPO) and United Kingdom Intellectual Property Office (IPO). The role requires a comprehensive understanding of requirements and processes of EPO, IPO and PCT filings and the ability to manage an extensive docket. Assistance to the US-based domestic and foreign patent filing teams and with client and firm projects should be expected. The Patent Paralegal works closely with legal and paralegal staff and clients to ensure timely and accurate handling of deadlines. Flexibility in work schedule is required.
Essential Functions
- Assists with the preparation and submission of various types of patent applications at the EPO and IPO, including but not limited to convention and non-convention filings; National/Regional Phase entries; divisional applications; and UK Designs.
- Assists with the preparation and submission of documents relating to prosecution of EPO, IPO and PCT applications, such as office action responses and validations of EP patents.
- Monitors external and internal deadlines for assigned matters and acts to ensure deadlines are accurately and timely handled.
- Assists with portfolio and deadline management.
- Prepares client portfolio status and docket reports.
- Reviews incoming and outgoing EPO, IPO and PCT communications.
- Helps ensure that firm docket and file records are accurate, up to date, organised, and accessible.
- Prepares and sends reporting letters and updates client databases.
- Works closely with attorneys to support their needs and ensure seamless case management.
- Assists with transfers of client portfolios into the firm, including data audits; preparation of status and docket reports; and prosecution cost estimates.
- Assists with the onboarding of new legal and paralegal hires. Works with supervisor to train and guide junior level paralegals to ensure compliance with rules and laws of relevant jurisdictions and adherence to firm’s best practices.
- Assists with firm and client projects.
- Conducts research and stays updated on changes in laws, rules, software systems, and platforms. Alerts supervisor of changes and discusses potential impact on procedures.
- Performs other duties relating to prosecution support such as quality control review of submissions to the EPO, IPO and PCT offices and maintenance of client information.
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Required Skills and Capabilities
- Thorough knowledge and understanding of EPO, IPO and PCT patent prosecution rules and practices.
- Excellent interpersonal and communication skills.
- Efficient and productive with excellent attention to detail and commitment to quality work product.
- Solutions-oriented mindset and proactive in problem-solving.
- Ability to plan, organise, carry out, and complete multiple tasks and projects concurrently.
- Ability to work under tight deadlines and respond quickly to shifting demands and opportunities.
- Openness to feedback and willingness to incorporate suggestions for development.
- Strong computer skills, including familiarity with advance functions in Microsoft Word, Excel, and Outlook. Ability to learn new software, services, and platforms.
- Ability to maintain a professional demeanor in all situations.
- Ability to work in a team environment and effectively with all firm employees in a multi-office environment with remote employees and across time zones.
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Qualifications
- 3 years patent prosecution experience
- Introductory Patent Paralegal Course (IPPC)
- Must be able to work overtime and a flexible schedule.
The above job description is intended to describe the general content of and requirements for the performance of this job. It is not to be construed as an exhaustive statement of essential functions, responsibilities, or requirements. Firm management reserves the right to amend and change responsibilities to meet business and organisational needs.
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