Paralegal - Intellectual Property
Ice Miller LLP, Indianapolis, IN, United States
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.
Salary in the range of $75,000 - $120,000 dependent on location and experience level***
Responsibilities
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
Prepares and files various documents with the USPTO or foreign counsel
Adept at researching the MPEP for solutions to procedural questions
Highly knowledgeable of US, PCT, and foreign patent procedure and formality requirements; able to prepare corrective patent documents and handle formalities responses (e.g. updating applicant, correcting filing receipts, responding to Missing Parts and Corrected Papers) 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
Payments of 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 in order to provide adequate time to respond
Qualifications
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; ability to shift priorities quickly without compromising deadlines or quality
Ability to be proactive and to 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 DocuSign
Ability to perform all essential duties
Other Requirements The requirements described below are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.
Equipment Operated: This position requires extensive use of a computer and telephone. This position also requires the use of printing, copying, faxing and scanning equipment.
Physical Requirements: While performing the duties of this job, the employee is occasionally required to sit; stand; talk; see; and hear.
Mental Requirements: Ability to communicate effectively, verbally and in writing, with a diverse group of people.
Work Environment: While performing the duties of this job, the employee may be exposed to weather conditions while traveling. The noise level in the work environment is usually moderate.
Benefits Benefits provided include: Paid time off, Health insurance, Vision and Dental Insurance, 401k (with an employer match), life insurance, and many others. Please reach out for a comprehensive list of benefits provided.
Ice Miller is an Equal Opportunity Employer. Candidates must have permanent authorization to work in the United States. Ice Miller is committed to recruiting, developing and retaining talented attorneys and professional staff from all backgrounds. To succeed, we take great pride in a culture where everyone at Ice Miller feels respected, is treated fairly and has the opportunity to perform to their highest potential.
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Salary in the range of $75,000 - $120,000 dependent on location and experience level***
Responsibilities
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
Prepares and files various documents with the USPTO or foreign counsel
Adept at researching the MPEP for solutions to procedural questions
Highly knowledgeable of US, PCT, and foreign patent procedure and formality requirements; able to prepare corrective patent documents and handle formalities responses (e.g. updating applicant, correcting filing receipts, responding to Missing Parts and Corrected Papers) 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
Payments of 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 in order to provide adequate time to respond
Qualifications
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; ability to shift priorities quickly without compromising deadlines or quality
Ability to be proactive and to 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 DocuSign
Ability to perform all essential duties
Other Requirements The requirements described below are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.
Equipment Operated: This position requires extensive use of a computer and telephone. This position also requires the use of printing, copying, faxing and scanning equipment.
Physical Requirements: While performing the duties of this job, the employee is occasionally required to sit; stand; talk; see; and hear.
Mental Requirements: Ability to communicate effectively, verbally and in writing, with a diverse group of people.
Work Environment: While performing the duties of this job, the employee may be exposed to weather conditions while traveling. The noise level in the work environment is usually moderate.
Benefits Benefits provided include: Paid time off, Health insurance, Vision and Dental Insurance, 401k (with an employer match), life insurance, and many others. Please reach out for a comprehensive list of benefits provided.
Ice Miller is an Equal Opportunity Employer. Candidates must have permanent authorization to work in the United States. Ice Miller is committed to recruiting, developing and retaining talented attorneys and professional staff from all backgrounds. To succeed, we take great pride in a culture where everyone at Ice Miller feels respected, is treated fairly and has the opportunity to perform to their highest potential.
#J-18808-Ljbffr