IP Paralegal - Patent Prosecution

Sheppard, Mullin, Richter & Hampton LLP, a global Am Law 50 firm, is seeking an experienced IP Paralegal to join our Intellectual Property Practice Group.

We prefer candidates who can work from our Washington DC office, but will consider other candidates who can work from one of our California offices. The other offices we are considering are: Downtown Los Angeles, Century City, Orange County, Downtown San Diego, Del Mar, Silicon Valley and San Francisco. There is only one opening.

Sheppard Mullin is currently hiring an experienced, well-organized IP Paralegal to primarily support Healthcare and life sciences IP attorneys and patent agents in all aspects of patent prosecution. The ideal candidate will have at least 5 years’ experience in patent prosecution and US and foreign filings.

Responsibilities

Independently file patent applications with the USPTOManage the docketProsecute infringementsResearch across patent databasesEnsure that client-matter numbers are opened according to the Firm’s guidelines.Timely review and forward annuity and maintenance fee information to the annuity team, and send foreign attorney invoices to the accounting department.Prepares supporting documents for attorneys including, but not limited to, the following:US and PCT application filing papersUS formal documents, including Declarations, Assignments, and Powers of AttorneyUS prosecution papers, including Information Disclosure Statements, SB08’s, Responses to Missing Parts, Responses to Office Actions, Petitions, Issue Fee papers, and other USPTO formsRoutine foreign prosecution documents such as PCT and direct national patent application filing papers, Authorization of Agents, Priority Documents, Assignments, and all other foreign formalities formsReporting, reminder and instruction correspondence to clientsInstruction correspondence to foreign associatesPatent Status ChartsContacts USPTO, WIPO and foreign associates regarding status of applicationsWorks with Docketing Paralegal and attorneys and agents on managing the dockets and advising of deadlines; prepares and distributes docket or other status reports as directedReviews and organizes patent documents and files; ensures emails and documents are properly filed in NetDocs according to filing protocolsCoordinates Sequence Listings, Formal Drawings and Legalization of Documents with outside vendorsWorks with supervisor and other patent staff on forms, prosecution manual, or other processes associated with Patent Practice ManagementPerforms special projects as assigned, particularly IP Due Diligence projects.Records time for billing and statistical purposesPerforms any and all other duties as necessary and as assigned by your supervisor for efficient functioning of the Department, Office, and Firm

Essential Functions Of Job

Prepare and file U.S. patent applications and responses, both electronically and paper (including preparation and review of necessary filing documents); Establishes and maintains patent files: open files, prepares formal documents for filing, including, abstracts, drawings and preliminary amendments.Draft correspondence to clients regarding status of applications and patents, including reporting of filing receipts for applications, publication notices and forwarding patent certificatesReview and manage files and docket for deadlines, understand docket and deadlines and action needed on each fileAssist in patent filing strategy discussions and due diligenceCommunicate with appropriate attorneys and team members about docketAct as a single point of contact for the client and providing assistance with incoming files to ensure accuracy and completenessPrepare and file Information Disclosure Statements; Ensuring timeliness, accuracy and consistency in work productMaintain accurate daily time records for client billing purposesReviews all incoming correspondence from foreign associates for essential docketing and for non-substantive responses due in connection with filing of applications.

Qualifications And Experience

Required Qualifications: At least 5+ years working as a Patent Prosecution Paralegal.

Education

Required: Bachelor's Degree or 5+ years of relevant work experience in an Intellectual Property setting.

License and Certification

Required: ABA Approved Paralegal Certificate

Computer/Software Knowledge

Required: Microsoft Suite including Outlook, Word, Excel

Preferred: First to File and FoundationIP

Work Environment

Current Firm policy is hybrid–working in the office at least three days per week, and working from home the rest of the week (subject to change).Overtime will be required on occasion as the workload requires.

Travel Requirements

Up to 10% travel occasionally to nearby office if based in San Francisco or Silicon Valley.

California: The pay range for this position is $51.00 to $76.00 per hour.

We will consider qualified applicants with criminal histories in a manner consistent with all applicable federal, state, and local laws, including the San Francisco Fair Chance Ordinance and the Los Angeles Fair Chance Initiative for Hiring Ordinance.

Sheppard Mullin is an equal opportunity employer and does not discriminate on the basis of race, color, religion, sex, sexual orientation, gender identity and/or expression, national or ethnic origin, ancestry, citizenship, age, marital status, protected medical condition, physical or mental disability, veteran status, or any other characteristics protected by law.