What is a Patent Paralegal? (A Career Guide)


During a patent prosecution process, you might have thought “ What is a patent paralegal ” Is there a career for me there?”

First, you must understand what is a patent paralegal ? Then, you must understand their responsibilities. This will serve as a career guide for aspirants wanting to become a patent paralegal.

The patent process deals with a lot of legal, technical and communicative work. Basically, their work involves a variety of tasks. This includes maintaining a strong communication with the client and the USPTO. Further, they need to prepare documents, help with docketing, etc.

Hence, hiring a paralegal is an absolute necessity and it is a good career path. Let’s understand this in greater depth.

What is a Patent Paralegal: Introduction to the Role

A paralegal basically handles substantive legal work while working for a lawyer/patent agent. The work involves recognition, evaluation, and communication of relevant facts and legal concepts.

However, keep in mind that a lawyer can do this work completely by themselves. But, it is often the situation where a large amount of work needs to be finished before a tight deadline. Hence, a paralegal can help a lawyer in balancing the workload.

Related Article: Benefits of a Patent Paralegal Service.

Let’s focus on the individual words of the term “ What is a Patent Paralegal ” to understand the job better. Since it involves “patents”, a patent paralegal’s legal work focuses on patent-related matters. The field of patents requires a technical understanding of scientific principles and phenomena. Therefore, a patent paralegal must comprehend those scientific principles to carry out tasks efficiently. Hence, they need to have a basic understanding of sciences like engineering, life sciences, chemistry, etc. At the most basic level, they must possess good analytical skills.

Related Article: Patent paralegal: Duties to Perform

What is a Patent Paralegal: Job Responsibilities

A patent paralegal needs to have qualities pertaining to multiple fields. They need to handle a lot of paperwork and maintain the application docket. A task of such vitality requires vigilance and awareness.

They need to be able to carry out tasks like:

Meticulous in Research

You shouldn’t just directly start the patent filing process. First, it is vital to perform a background check. You need to be absolutely sure about your invention. Any accidental infringement might land you into legal trouble. If something similar to your invention already exists, then you may not get patent protection. Hence, researching before filing is very important. During this search, you may conduct a variety of searches like Patent Novelty Search, Patent Invalidity Search, etc.

Patent Drafting and filing

This is the most critical task a patent paralegal must do. It requires skill as well as experience. A patent document needs to be comprehensive and accurate. A patent paralegal provides assistance in Patent Drafting, Patent Filing, IDS Preparation, Patent Proofreading, etc.

Docketing and Monitoring Deadlines

We’ve mentioned before, the complex patent process comprises a large number of documents. Hence, they need to be organized properly so that every bit of information is readily available. A patent paralegal must be able to efficiently docket documents.

They must also monitor various deadlines so that everything is done in a timely manner. Obviously, they will often find themselves working on a tight schedule at times. Hence, they must do everything in their power to avoid any undue legal situations. Obviously, this task will only be manageable when they maintain a good docketing system. Such a system will enable them to efficiently handle multiple cases together.

Administrative tasks and Communication

The question “ what is a patent paralegal ” may make you wonder, is there the need to perform administrative tasks? The answer is yes. Occasionally, they will have to copies of documents, ensuring that the office has enough supplies, etc. A patent paralegal also needs to track billable hours with the client and ensure transparency between the client and the law firm.

Their job also requires them to provide transparent communication between different entities. They might have to adopt the role of an intermediary between the court and the client. This often involves lengthy communications, via written documents and in-court hearings. This procedure often requires producing crucial documents like an Office Action response. Here, a patent paralegal may help you.

Patent Watch

Simply acquiring a patent isn’t enough; you also need to watch it. It is your responsibility to enforce your rights in the event of an infringement. Among the many tasks that paralegals do, they can provide you with Patent Watch services as well. They’ll keep track of the latest news in the field of the invention so that they can monitor any infringements.

If they notice anything that’s potentially harmful, they will inform you immediately.

What is a Patent Paralegal: Qualifications and Experience Needed

Qualifications

After finding out answers about “ what is a patent paralegal ” let’s focus on what it takes to become one. First of all, you need to complete at least a 2-year associate’s degree in a paralegal program. This is a fundamental requirement that most patent law offices expect you to meet.

While completing your academic degrees, it will be a bonus if you pursue specialized courses in patent law. In case you completed your degree in some other field, you can take certified courses from recognized institutions. This will help you to narrow down the knowledge gap. Such courses generally focus on a variety of IP domains such as patents, copyrights, design, trademark, etc. For example, the DL101: General Course on Intellectual Property from WIPO.

Experience

You will also need some experience in patent law. However, it is quintessential for you to acquire some qualifications before diving into this field. You can start off with the courses we have listed above.

Also, you can apply at some patent law offices as an intern. Getting such an internship will equip you with invaluable experience and it will prove to be useful. However, you must note that such internships are often unpaid. The experience you gain in these places is practical knowledge, which no books or classrooms can provide.

Need a Paralegal? – Patent Drafting Catalyst

You are now aware of what is a paralegal. If you need the help, we at Patent Drafting Catalyst are here for you. Our team boasts 10+ years of experience in supporting patent prosecution with 200+ full-time patent engineers in 30+ technology areas. We have plenty of experience in working with multiple patent attorneys/Firms from multiple countries for patent drafting.

We are always up-to-date about the latest laws and acceptable practices. Our patent engineers understand the importance of comprehensive patent claims in terms of patent commercialization and infringement litigation.

To make an inquiry, visit the Patent Drafting Catalyst Services.

Other Related Articles:

Patent Watch: Why Do I Need It?

Intellectual Property (IP) Paralegals Facts

A Complete Guide to Patent Novelty Search


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