10 days old

Intellectual Property Patent Paralegal

Chicago, Illinois 60661 Work Remotely
  • Job Type
  • Job Status
    Full Time

About Katten

Katten is a firm of first choice for clients seeking sophisticated, high-value legal services in the United States and abroad. Our nationally recognized practices include corporate, financial services, litigation, real estate, environmental, commercial finance, insolvency and restructuring, intellectual property, and trusts and estates. Our more than 700 attorneys serve public and private companies, including a third of the Fortune 100, as well as a number of government and nonprofit organizations and individuals. We provide full-service legal advice from locations across the United States and in London and Shanghai.

Summary for the Intellectual Property Patent Paralegal

The Intellectual Property Patent Paralegal is responsible for providing paralegal support and assistance to supervising attorneys and paralegals in all aspects of the Intellectual Property practice area, with a primary focus on patents. This position will support multiple offices. The Paralegal maintains professionalism and strict confidentiality in all client and Firm matters.

Essential Duties and Responsibilities include, but may not be limited to, the following. Other duties may be requested and/or assigned. Essential functions are primary job duties that an individual must be able to perform successfully with or without a reasonable accommodation. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

Client billable hour requirement: 1,700 hours annually (142 client billable hours average per month).

  • Electronically file documents at the USPTO using the USPTO’s electronic filing system.
  • Prepare various types of petitions, Information Disclosure Statements, assignments, preliminary amendments, Requests for Corrected Filing Receipts, Requests for change of Small Entity Status, and other documents generally associated with patent prosecution.
  • Prepare and electronically file PCT applications and U.S. National Stage applications, maintain contact with foreign associates regarding foreign applications.
  • Review office actions issued by Examiners; prepare emails to clients forwarding Office Actions, Notices of Recordation of Assignments, Official Filing Receipts, and other correspondence from the USPTO. Prepare letters to clients forwarding letters patent.
  • Obtain Apostilles from the U.S. Department of State and from officials in various states.
  • Prepare Copyright applications and file documents at the U.S. Copyright Office.
  • Correspond with client, primarily by email regarding pending matters before the USPTO and foreign patent offices. Clients include individuals, small and mid-market companies, foreign law firms and other foreign applicants.
  • Conduct ownership searches of patents and published patent applications, as well as copyright registrations and applications, particularly with regards to supporting corporate, M&A transaction due diligence.
  • Participate in weekly docket meetings to review deadlines related to pending patent applications and provide status updates on pending projects.

Supervisory Responsibilities

  • This position has no direct supervisory responsibilities, however, has the authority to delegate and supervise work performed by Project Assistant and/or Paralegal I and II staff on a case-by-case basis.


Knowledge, Skills and Abilities

  • Bachelor’s degree and five or more year’s related experience in the Intellectual Property, specifically both U.S. and foreign patent prosecution, preferably in a law firm environment; or equivalent combination of education and experience. Legal research knowledge and ability to use law library are required. Paralegal certificate from an ABA accredited paralegal program a plus.
  • Substantive trial experience required, including pre-trial logistical set-up, in-trial participation and post-trial assistance.
  • Computer proficient with experience and working knowledge of Westlaw and other intellectual property-related databases, substantive experience with Relativity databases (knowledge of Concordance is a plus), Internet research, due diligence, Excel, Outlook, and MS Word preferred. Knowledge and experience with United States Patent and Trademark Office (USPTO) procedures. Knowledge of foreign trademark and patent rules in order to prepare foreign filings desired. Patent interference and litigation experience a plus.
  • Substantive cite checking skills are required; knowledge of the use of the Blue Book is essential. Analytical skills requiring an aptitude for detail and accuracy in order to analyze and research intellectual property data, process information, conduct legal research, and perform essential duties.
  • Excellent organizational skills including record keeping, data collection, and system information. Ability to compile and analyze data and furnish information in report format, written correspondence, e‑mail, or verbally.
  • Excellent interpersonal, verbal, and written communication skills. Ability to communicate with courtesy and diplomacy, efficiently follow written and verbal instructions, provide information, and maintain effective relationships with a diverse group of attorneys, clients, staff, and outside contacts.
  • Dependable team player who works collaboratively and cooperatively with others in a team-oriented environment. Ability to act independently and make routine decisions within scope of the position’s responsibilities. 
  • Ability to organize and manage multiple priorities simultaneously in a fast-paced, deadline-driven, detail-oriented work environment, adapt to changes in workflow, and ensure work is completed within defined deadlines. Proactive with excellent troubleshooting, problem resolution, and follow-through skills.
  • Possess excellent knowledge of reading, writing, grammar, spelling, punctuation, proofreading, and formatting in order to interpret source data, prepare intellectual property documents and forms, proofread material for grammatical, typographical, and spelling errors, and perform file maintenance.
  • Ability to perform mathematical calculations and apply mathematical concepts when computing, reconciling balances, and verifying numerical data on forms and documents.
  • Ability to operate standard office equipment including computer, laser printer, telephone, photocopier, calculator, scanner, facsimile, etc.
  • Ability to occasionally retrieve and distribute files, written documentation and copies, or office supplies weighing up to 20 pounds.
  • Work occasionally requires more than 37.5 hours per week to perform the essential duties of the position.
  • Occasional travel to other Firm locations may be required.

We offer an outstanding benefit package which includes: medical/dental/vision, 401k with employer contribution; transportation fringe benefit program; back-up care option; generous paid time off policy; and long-term and short-term disability policies.

Katten Muchin Rosenman LLP is an Equal Opportunity Employer/AA-M/F/SO/Disability/Veteran.


Posted: 2021-09-10 Expires: 2021-10-11

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Intellectual Property Patent Paralegal

Chicago, Illinois 60661

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