Intellectual Property Paralegal

Paralegal Services Atlanta, Georgia Houston, Texas

This position provides patent prosecution support for Intellectual Property lawyers who primarily work on patent issues in the chemical, mechanical, and electrical arts, and in biotechnology and pharmaceutical industries.  The individual must be able to work independently in an environment that is heavily computer-based, follow established client and team guidelines for matter management, maintain positive contact with clients, and observe confidentiality of client matters. This position can sit in either the Atlanta or Houston office and is under the direction of the Paralegal Services Department.   
Qualified candidates will have the following skills/proficiencies:  
U.S. Patent Prosecution 
  • Assist with preparation of patent application requisite documents including transmittal forms, assignments, information disclosure statements, declarations forms and all other related forms. Complete electronic filing of patent applications including provisional, non-provisional and design patents 
  • Assist with prosecution of patent applications including drafting of Office Action “shell” response and Preliminary Amendments and filing of responses with the United States Patent and Trademark Office.  Manage client documents for execution including power of attorney forms and assignment forms 
  • Review and manage docket deadlines.  Complete related status checks 
  • Manage timely payment of maintenance fees for patents. Correspond with foreign counsel regarding new patent filings and related prosecution deadlines 
  • Prepare reporting letters to client and contact with clients as needed 
  • Prepare and file Information Disclosure Statements  
  • Experience with Inter Partes Review
Foreign Patent Prosecution 
  • Knowledge of PCT Rules and Regulations 
  • Prepare and file Patent Cooperation Treaty (PCT) applications. Manage and draft related documents in support of patent application as needed including Correction to Defects and Recording Changes to application.  Review Search Reports, Examination Reports and Written Opinions. 
  • Correspond with foreign counsel regarding new patent filings and related prosecution deadlines 
  • Manage timely payment of maintenance fees and annuity payments for foreign patents and patent applications 
  • Review and manage docket deadlines.  Complete related status checks 
  • Prepare reporting letters to client and communicate with clients as needed  
 Due Diligence 
  • Conduct database searches for patent, assignment, and security lien status 
  • Assist transaction teams with searches 
Client Relations 
  • Respond to various client requests 
  • Prepare and maintain patent status charts 
  • Maintain close direct client relationship 
Preferred skills/proficiencies:  
  • Experience with trademark portfolios and other practices
  • Bachelor’s degree with a 3.5 cumulative GPA preferred; paralegal certificate from an ABA-approved school preferred 
  • Approximately 5-10 years of patent prosecution experience in a mid- to large-size law firm
  • Proficient in Excel, PowerPoint, Word, and Adobe 
  • Strong, concise communication and written skills 
  • Able to work overtime, including weekends, sometimes as needed, without notice 
  • Some travel may be necessary 
  • Able to lift boxes that weigh up to 20 lbs.; able to sit or stand for long periods of time 
We are proud of our remarkably cohesive culture, which now encompasses more than 2,000 lawyers and business professionals in 24 offices worldwide.  We seek to attract and develop the very best talent to work with us. 
King & Spalding LLP (K&S) is committed to providing equal employment opportunity to all applicants and employees in full compliance with all state, federal, and local laws prohibiting discrimination on the basis of race, color, religion, sex, sexual orientation, gender identity, national origin, genetic information, age, disability or any other status protected by applicable law.