Paralegal - Intellectual Property

Job Summary

Ice Miller LLP is seeking a Paralegal to support attorneys and agents in our Intellectual Property group. This person must be capable of working in a fast‑paced environment with time‑sensitive materials and maintain strict confidentiality due to the nature of the position.

• Assisting with preparation, filing, prosecution and maintenance of all patent applications and patents (US, PCT, and foreign)
• Knowledgeable of electronic filings via Patent Center, EFS‑Web, EPAS, with the USPTO and ePCT with the IB
• Manage worldwide client patent portfolios; coordinate domestic and international filings with the USPTO and foreign law offices and/or other foreign entities
• Prepare and file various documents with the USPTO or foreign counsel
• Adept at researching the MPEP for solutions to procedural questions
• Must be highly knowledgeable of US, PCT, and foreign patent procedure and formality requirements; prepare corrective patent documents and handle formalities responses with minimal attorney oversight
• Preparing Information Disclosure Statements (IDS); analyze families and related cases to prepare Supplemental IDSs when needed
• Prepare and file documentation with USPTO and WIPO, including assignment agreements, change of name filings, and security interests
• Prepares and records assignments
• Prepares correspondence to clients
• Reviews and takes action on correspondence received from foreign associates
• Obtains legalizations and certifications; prepares foreign filing cost estimates
• Paying maintenance fees and other renewal/annuity costs
• Prepares status summary reports for attorneys and clients
• Research and compile information pertaining to national and international patent rights including searches of USPTO records, industry databases and general legal research
• Proactively manage patent prosecution dockets; monitor and follow up on dates associated with the US and foreign patent prosecution docket, including clearing dates and providing follow up with attorneys, clients, and foreign associates to provide adequate time to respond

• High School diploma required
• Minimum of 3 years of patent administration or paralegal experience, preferably in a law firm
• Additional knowledge of trademark prosecution and/or IP litigation experience is a plus
• Intermediate to advanced experience with Microsoft Office Suite required
• Familiarity with CPi docketing software a plus
• Excellent time management skills and ability to work in high pressure environments; shift priorities quickly without compromising deadlines or quality
• Ability to be proactive and identify and address problems quickly
• Excellent clerical skills and knowledge of grammar, spelling and punctuation
• Exceptional attention to detail and ability to work independently
• Experience and familiarity with Adobe Acrobat Pro and Docu Sign
• Ability to perform all essential duties

• Equipment Operated:
  Extensive use of a computer and telephone; also printing, copying, faxing and scanning equipment
• Physical Requirements:
  
  Ability to sit, stand, talk, see, and hear; occasional travel may be required
• Mental Requirements:
  Ability to communicate effectively, verbally and in writing, with a diverse group of people
• Work Environment:
  Exposure to weather conditions while traveling; moderate noise level

Benefits provided include:
Paid time off, Health insurance, Vision and Dental Insurance, 401(k) (with an employer match), life insurance, and many others. Please reach out for a comprehensive list of benefits provided.

Ice Miller LLP is an Equal Opportunity Employer.