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Job Details

IP Prosecution Secretary/Paralegal

Company name
Greenberg Traurig, L.L.P

East Palo Alto, CA

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Greenberg Traurig, a global law firm, currently has an excellent full-time employment opportunity in the IP Prosecution Department of our Silicon Valley office. We offer competitive compensation and an excellent benefits package.

Position Summary

The IP Prosecution Secretary/Paralegal will provide organizational and practice specific assistance to attorneys in the IP Department in managing patent prosecution matters including related research, analysis, docketing and eFiling. Also supports the department with general secretarial and administrative duties and special projects related to IP matters. Candidate should also be flexible to work overtime as needed.

Duties & Responsibilities

Manage patent processes

Prepare and proof patent forms and documents

eFile with the U.S. Patent and Trademark Office

Docket management and calendaring, requiring significant awareness of and sensitivity to time management and filing deadlines

Manage and update files with USPTO Pair database and prepare responses as needed

Calculate Patent Term Adjustments

Process payment of Issue Fees

Review files and preparation of Information Disclosure Statements and accompanying documents

Effect national phase entry of PCT applications, and prepare and file continuing applications

Correspond with foreign associates, oversee payment of foreign associates' invoices, and prepare of reporting letters to client

Effect portfolio transfers and manage multi-client portfolios

File and assist in prosecution of design applications (including convention deadlines for filing abroad)

Track chain of title in U.S. patents and ability to perfect same

Proof and edit patent applications and office actions and prepare office actions

Meet all ethical and professional requirements of the firm

Meet internal and external deadlines, and successful time management, including during periods of prolonged intense work during and after regular office hours

Fulfill firm administrative responsibilities, including, but not limited to, time entry, travel arrangements, expense reimbursements, filing, maintaining client lists and contacts, timekeeping and billing requirements

Adherence to firm policies

Skills & Competencies

Excellent organizational skills, including the ability to perform well under pressure, manage priorities and meet deadlines

Detail oriented

Reliable and dependable team player

Exercise discretion and maintain confidentiality of client information

Work independently, taking initiative to move projects to conclusion

Previous experience with Filesite is a plus

Must have excellent written and oral communication skills

While performing the duties of this job, the employee is occasionally required to walk from work station, to desk or to go to various offices to retrieve assignments. This position may also be sedentary and require the employee to sit for extended periods of time

Requires manual dexterity to dial a telephone, enter data into a computer, handle objects and operate tools

Some filing is required and this would entail the ability to lift files, open filing cabinets and bend or stand as necessary

Ability to work under pressure to meet strict deadlines

Ability to engage in active listening - giving full attention to what other people are saying, taking time to understand the points being made, asking questions as appropriate

Ability to deal calmly and effectively with high stress situations, including unfavorable situations and /or when constructive criticism is given

Proficient use of firm computer resources

Qualifications & Prior Experience

Extensive knowledge of U.S. patent rules and procedure; knowledge of PCT and/or national laws of other countries

Four year degree and/or paralegal training/certificate required

2-5 years of relevant work experience in a professional environment. Law firm experience preferred

High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, U.S. Patent Office Electronic Filing System, and other Internet research tools

At Greenberg Traurig, we are committed to diversity and inclusion in the workplace. It has been, and continues to be our goal, to foster a well-balanced workforce that contains a significant presence of minorities and women.

Company info

Greenberg Traurig, L.L.P
Website :

Company Profile
Miami-headquartered Greenberg Traurig LLP (also Greenberg Traurig, PA) popularly known as GT, is an international, full-service law firm having strength in real estate, litigation, corporate, and entertainment practices. It has close to 1800 attorneys serving through 35 offices located in the United States, Latin America, Europe, the Middle East and Asia. The team of lawyers provides counseling to its national and international clients on federal and state laws relating to regulatory compliance and litigation. GT stood tall amid the global economic downturn, and in 2010 the firm had a record year with its gross revenues climbing by 5% to over $1.2 billion. What industry insiders say about the firm is that it has a 'less bureaucratic,' 'less formal' atmosphere than many peer firms. However, there is a word of caution linked to it as many praise GT's 'entrepreneurial' and 'flexible' environment as good for 'self-motivated' associates, others see a cost attached to it with too much responsibility, with partners allowing associates to 'do anything, all by themselves, without regard to potential' consequences. But, GT still remains one among few law firms in the U.S. providing an attractive career path in the field of law with its diverse work culture and challenging environment. A statement of support by the company shows its commitment beyond the commercial interests. "GT is the first major law firm in the United States to adopt a statement in support of tribal sovereignty in its relationships with Indian tribes and nations. This statement outlines our dedication to the integrity of Native American and indigenous peoples and reflects the unique GT culture that helps set our firm apart." Today the firm is managed by notable names in the legal arena, Chief Executive Officer, Richard A. Rosenbaum; Executive Chairman, Cesar L. Alvarez; its President, Matthew Gorson; and its Chairman and Founder, Larry J. Hoffman. GT had initially had only one associate and one junior partner, and what's more, the firm had no plans of expanding outside the Miami metropolitan area. Founded in 1967 by Lawrence Hoffman, Mel Greenberg and Robert Traurig, GT today has strategic alliances at Milan and Rome. It was not before 1970 when attorneys Norman H. Lipoff and Albert D. Quentel joined with Greenberg, Traurig and Hoffman and also Former Florida governor Reubin Askew was a named partner in the early 1980s while he also sought the Democratic nomination for president. In 1991, GT began to expand nationwide, beginning with the opening of an office in New York City. The growth never took a halt for GT since then. In July 2009, it entered the London market, forming a new UK firm, operating as Greenberg Traurig Maher LLP. The firm now commands a good presence in some of the advanced countries.

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