Patent Paralegal

About This Role

Equivalent: Paralegal

Reporting to: Patent Team Head/ Manager

Job Summary

This position is mainly support patent attorneys in the routine procedural work, translation work and other admin works. A candidate with a patent background is preferred.

Details of Responsibility

• Procedural work in relation to new filings (confirming new filing instructions; preparing and filing application, monitoring deadlines and filing request for substantive examination);
• Preliminary work of design filing (assisting with the design application filings: setting up matter codes, preparing drawings/application documents, etc).
• Procedural work in relation to Official Notices (preparing reports and response to formal examination reports, monitoring deadline and corresponding with clients re reminders ,posting corresponding fixed fee);
• Reporting office actions (substantive examination);
• Preparing responses to office actions (substantive examination) and amended claims based on clients detailed instructions;
• Procedural work in relation to Official Notices (preparation of Reports and translation of official notice at the beginning, ideally gradually taking over all the responsibilities thereof, i.e. reporting to client directly, recording correspondence, posting corresponding fixed fee);
• Invoice related work (checking payment status, monitor client payment status, chasing payment ); 10%
• Other procedural work (preparing routine late filing/rectification documents);
• Patent Search, download and preliminary screen (conducting necessary patent search and downloading worldwide patent documents and screening target documents upon required);
• Checking results of search reports from foreign patent office / agents and compiling draft search report letters to client reporting results of searches;
• Navigating the UAE and Saudi Arabia Patent Office Portal.
• Filing cases at the UAE Online Patent Portal, paying annuities, uploading documents, requesting amendments, etc.
• Checking and reporting letters patent;
• Preparing draft amended claims to comply with local practice when filing corresponding applications in foreign countries, e.g. revising claim dependencies, converting method of treatment claims to recite patentable subject matter;
• Monitoring deadlines and sending annuity reminders and attending to payment of annuities;
• Preparing cost estimates and quotes for clients;
• Updating IPPO reminders for own work and for patent attorney.

Requirements

• Bachelor degree for English or a dual degree for English & Law;
• Patent background is preferred;
• Good at spoken and written English (equal or above TEM 8 level);
• Good communication skills with different departments;
• High sense of responsibility, patient, detail-minded, initiative & self-disciplined;
• Can work under pressure, a team player;
• Excellent computer skills (Word, Excel, etc)