San Diego, California
Job Description
Pillsbury is seeking an experienced Patent Prosecution Paralegal to join our Intellectual Property team. This position will provide comprehensive support for U.S. and international patent prosecution matters, working closely with attorneys, patent professionals, clients, and foreign associates throughout all stages of the patent prosecution process. The ideal candidate will bring strong knowledge of USPTO procedures, experience with U.S., PCT, and foreign patent filings, and a demonstrated ability to manage complex dockets and competing deadlines with exceptional accuracy and attention to detail. This is an excellent opportunity for a highly organized and proactive paralegal who thrives in a fast-paced, collaborative environment and is committed to delivering outstanding client service and high-quality work.
Primary Responsibilities
- Prepare and file U.S. patent applications, including utility, continuation, divisional, reissue, and related applications with the United States Patent and Trademark Office (USPTO).
- Prepare and file international (PCT) patent applications, direct foreign applications, and related follow-on documents.
- Prepare and file prosecution documents with the USPTO, PCT authorities, and foreign patent offices.
- Review, process, and report patent office communications, including filing receipts, publication notices, notices of recordation, issue notifications, notices of allowance, patent grants, and other official correspondence.
- Prepare and file patent-related formalities documents, including declarations, substitute statements, assignments, information disclosure statements (IDS), issue fee payments, and responses to formalities requirements.
- Prepare and file PCT-related documents, including Article 19 amendments, Chapter II demands, Article 34 amendments, and responses to invitations and notifications.
- Monitor and maintain client-specific dockets and ensure timely completion of all filing and prosecution deadlines.
- Maintain working knowledge of USPTO, PCT, and foreign jurisdiction requirements, including formal documents, priority documents, legalization requirements, translations, and deadline calculations.
- Communicate directly with clients and foreign associates regarding filings, formal documents, deadlines, and prosecution matters.
- Keep attorneys and patent professionals informed regarding the status of patent applications and prosecution activities.
- Research patent-related and client-specific inquiries.
- Compile information, perform research, and prepare reports as requested by attorneys and patent agents.
- Maintain and update electronic records, databases, docketing systems, iManage, client extranets, and related systems.
- Retrieve, organize, and manage patent-related documentation and correspondence.
- Perform other duties and special projects as assigned.
Qualifications
- Minimum of 3+ years of patent prosecution experience in a law firm or comparable professional services environment.
- Experience supporting U.S., PCT, and/or foreign patent prosecution matters.
- College degree or equivalent paralegal experience required; paralegal certificate preferred.
- Thorough knowledge of USPTO rules, procedures, and electronic filing systems.
- Working knowledge of PCT procedures and foreign patent prosecution practices preferred.
- Ability to meet the Firm's billable hour requirements while maintaining exceptional client service and high-quality work product.
- Excellent organizational, data management, and attention-to-detail skills.
- Strong analytical, problem-solving, and project management abilities.
- Ability to plan, organize, prioritize, and coordinate multiple projects and deadlines simultaneously.
- Sound judgment, initiative, and resourcefulness in accomplishing objectives.
The expected salary range for this position is $105k-145k. Final compensation will be determined based on several factors, including but not limited to, relevant experience, qualifications, skill set, and geographic location. Qualified applicants with arrest and conviction records will be considered for the position in accordance with the California Fair Chance Act.
Pillsbury Winthrop Shaw Pittman LLP is an Equal Opportunity Employer.
If you require an accommodation in order to apply for a position, please contact us at PillsburyWorkday@pillsburylaw.com.
