IP Paralegal (U.S & Foreign Patent Prosecution/hybrid)

About the job

Merchant & Gould is a full-service intellectual property law firm founded in 1900. We help sole inventors, emerging and established companies, universities, venture capitalists, and Fortune 500 and 100 companies stay ahead of the curve to gain leverage in new and existing markets. Our team positions clients for business success locally, nationally, and around the world. Join Merchant & Gould in our fast-paced Minneapolis office as an IP Paralegal.
 

Summary of Position (hybrid):

The IP Paralegal works with our Foreign Filing and International Teams in the preparation, prosecution and filing of United States National Stage (371) patent applications, Patent Cooperation Treaty (PCT) applications, and foreign patent applications. Reports to the Paralegal Manager.
This is a hybrid role and will require on-site presence at least 2 days a week.

Responsibilities:

• Accurately prepare, obtain, and file documents related to all phases of patent prosecution.
• Prepare and send foreign filing instructions.
• Manage and maintain a prosecution docket and follow-up to ensure due dates and deadlines are met.
• Review correspondence for essential docketing and for non-substantive responses due.
• Ensure timely reporting of filings and patent office correspondence.
• Prepare estimates of filing, prosecution, and maintenance costs.
• Engage in ongoing verbal and written communication with attorneys, clients, and foreign associates.
• Address specific client issues and prosecution requests as needed.
• Send internal and client reminders and reports as needed.
• Establish and maintain patent files.
• Maintain client portfolios through proactive firm/client communication.
• Track time to achieve billable goals as established by practice management.
• Collaborate with internal client and administrative teams to create, implement, and maintain standardized protocols.
• Assist in creating client-specific documentation templates and protocols.

Knowledge, skills and abilities required:

• Bachelor’s degree or Paralegal Certificate from an ABA-recognized program preferred.
• Minimum 4 years of practice as a Patent Paralegal with both U.S. and foreign prosecution knowledge, preferably with law firm experience.
• High-level of initiative, responsibility, dedication, and accuracy required.
• Ability to work independently and meet critical deadlines under supervision of an attorney.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Able to manage shifting priorities.
• Ability to establish and maintain good working relationships.

• Excellent computer skills with knowledge and proficiency of Microsoft Office Suite.
• Familiarity with USPTO, WIPO, and foreign patent offices and related databases.
• Familiarity with electronic data management and case management systems.
• Ability to learn new software and effectively use and maintain computer databases.
• Knowledge of PracticeLink and experience with 3E is a plus.

We are equally committed to providing competitive, affordable health and wellness benefits to help take care of yourself and your family, including: a competitive salary, a comprehensive benefits package that includes employee medical, dental, vision, life, AD&D insurance, short- and long-term disability, 401(k) match, and ten firm holidays.

Merchant & Gould provides equal employment opportunities to all employees and applicants for employment and prohibits discrimination and harassment of any type without regard to race, color, religion, age, sex, national origin, disability status, genetics, protected veteran status, sexual orientation, gender identity or expression, or any other characteristic protected by federal, state or local laws. This policy applies to all terms and conditions of employment, including recruiting, hiring, placement, promotion, termination, layoff, recall, transfer, leaves of absence, compensation, and training. We welcome candidates with disabilities. If you need any accommodation during the application or the recruiting process, please contact our Human Resources Department at 1-612-332-5300.