Patent Paralegal

Thompson Hine LLP, an AmLaw 200 firm regularly for our commitment to Innovation and Inclusion, is currently searching for an experienced Patent Paralegal to fill a full-time (40 hrs / week) position in our Atlanta office. This role is responsible for preparing and electronically filing documents pertaining to US and PCT patent applications, including electronically filing US applications, responses to office actions, appeal briefs, international (PCT) applications, PCT amendments, and preparing documents and other related filings.

The IP Paralegal also prepares foreign filing estimates, documents and instructions for PCT national phase filings, and status and docket reports for clients. Lastly, this individual will oversee domestic and foreign patent prosecution matters, from filing through grants (including payment of annuity and maintenance fees).

Specific responsibilities include, but are not limited to;

• File patent applications, international (PCT) applications and amendments, responses to office actions, appeal briefs, and other formal papers.
• Prepare and file all transmittals, cover sheets, application data sheets, assignments, declarations, information disclosure statements, recordation of assignments, name changes, correspondence address forms, and other application components and particulars, as applicable, in each case related to domestic and foreign patent applications.
• Utilize USPTO and other government agency electronic filing systems, databases, and other online resources
• Assemble patent and non-patent literature and coordinate with clients to obtain any further materials and information for such disclosure purposes.
• Address the various filing formalities and procedures of patent offices throughout the world.
• Contact clients to obtain necessary documents and information to prepare, file and prosecute patent applications.
• Complete Notice of Allowance checklist, due diligence, and payment of issue fee.
• Manage, coordinate, and prepare filing particulars for maintenance and annuity fee payments for domestic and foreign patent applications.
• Review and report correspondence received from U.S. and foreign patent offices. Review and report upon client instructions, including preparing drafts of communications responsive to client instructions or inquiries related to domestic and foreign applications.
• Proofread, photocopy, scan documents into the firm’s document management system.
• Provide back-up support to other team members as needed. Willingness and flexibility to work closely with all other departments as needed.
• Complete additional special projects, as assigned.

Qualified candidates will have at least a 4-year college degree, or 4+ years of Paralegal experience. A degree in Paralegal Studies or Paralegal Certification, plus 8-10 years of patent prosecution experience is preferred. This should include a detailed knowledge of patent filing and prosecution practices in the USPTO, PTC, and other major worldwide jurisdictions. Applicants should have a working knowledge of patent docketing software and intermediate knowledge of Microsoft Office Suite programs. IPR knowledge and experience with LEXIS is a plus.

The IP Paralegal will be expected to regularly communicate with a diverse group of employees, including attorneys, secretaries, and staff, as well as clients. As such, candidates should possess strong verbal and written communication, and interpersonal skills. Maintaining a high standard for providing excellent customer service is critical to being successful in this capacity. The nature of this position requires the ability to calmly and efficiently handle tasks under pressure and shift priorities as needed. Regular attendance, punctuality, and the ability to adjust work hours depending on workflow are all essential functions of this role.

Thompson Hine LLP is an Equal Opportunity Employer that offers competitive wages, and a robust benefits package. Benefit offerings include, but are not limited to, medical, dental, and vision insurance as well as Paid Time Off (PTO).

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