Paralegal
As a patent paralegal in a law firm, you support patent attorneys in tasks specific to patent prosecution and/or litigation. In an in-house setting, you will work directly with outside counsel teams to handle patent filings. In-house teams focus more heavily on patent strategy and you will work as liaison between outside counsel in a law firm and the in-house counsel.
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ADAPT Professional Guide
Paralegal
Patent Operations
Technical Advisor
Patent Agent
Patent Examiner
Patent Attorney
Transactions Attorney
“Working as a patent paralegal at a prosecution-focused law firm gave me a niche skill set that made me very marketable when looking for a job in-house. My resume spoke for itself and I was able to land an in-house job without a referral!”
-Patent Paralegal, Boutique Patent Firm
Qualifications
Associate or undergraduate degree is generally recommended.
In some states, a Paralegal Certificate may be required. For more information, the ABA Model Guidelines for Utilization of Paralegal Services can be found here.
Job Description and Responsibilites
Firm:
As a patent paralegal at a law firm, you provide support to patent attorneys in tasks specific to patent prosecution and/or litigation.
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Though patent paralegals are not allowed to practice law, they develop a deep knowledge of patent law and leverage this knowledge to manage dockets, prepare and file official documents with patent offices worldwide, and perform a variety of additional support tasks. Typically patent paralegals start at law firms, and this specialized experience can be largely impactful when seeking a job in-house. If a patent paralegal happens to also hold a STEM undergraduate degree, they could use this career as a stepping stone to becoming a patent agent.
As an in-house patent paralegal, you will work directly with outside counsel teams to handle patent filings. In-house teams focus more on patent strategy, and the patent paralegals assist with managing those programs, helping with reporting, and maintaining law firm and vendor relations. Some in-house patent paralegals assist with patent office filings.
Most in-house patent paralegals start their careers at law firms before transitioning to in-house roles at a company. Law firm experience provides the patent law fundamentals which are largely instrumental in managing large-scale programs that encompass the entire patent organization.
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Example of Day-to-day
Vendor management: running RFI/RFPs, drafting and negotiating vendor agreements
Outside Counsel Management: onboarding new counsel, design and roll out standard operating procedures, maintain outside counsel guidelines
Patent Tooling Management: Administrate matter management system, work with developers to triage bugs, and feature requests
Billing and Invoicing Support: Manage fee schedules, oversee invoicing processes and tooling, training
Heidi's Path
Patent Paralegal, Team Lead
In my current role as the electrical engineering/computer science team lead, I am tasked with creating and casting vision within the team to ensure alignment of team processes and projects with our overall firm structure and goals. In this role, I work to foster collaboration between a diverse team, including attorneys, agents, technical assistants, paralegals, IP specialists, and other firm staff. Starting my own company right out of college allowed me to focus on the administrative needs of individuals and small businesses while gaining experience working with various clients. As technology became more accessible, my path was directed to a global freight forwarding company where I eventually worked my way to a supervisory role until the company relocated to a different city.
At this point in my career, I began working in the IP legal department of a manufacturing company where I began to learn the intricacies of IP law, particularly patent prosecution. In an effort to learn more about the field, I obtained an Intellectual Property Paralegal Certificate with the encouragement of in-house counsel at the company. My path moved forward when I joined a law firm and leveraged my knowledge to implement processes, policies, and protocols to ensure that a high-level of service is consistently provided to the firm’s internal and external clients.
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This is the path I took to get here.
Office Administration (B.S.)
Administrative Business Owner
Intellectual Property (IP) Paralegal Certificate
Law Firm Patent IP Paralegal
Law Firm Patent Team Lead
In House Patent Administrative Assistant
In-House Patent IP Paralegal
These pros and cons were provided by professionals in the field and are purely subjective.
Pros
Cons
Firm:
Predictable work schedule compared to other types of law.
Niche skill set.
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In-house:
No billable hours.
More room for skill growth.
Firm:
Skill growth and opportunities hit a ceiling after a few years.
Work may feel administrative and repetitive compared to other areas of law.
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In-house:
Skill growth and opportunities may hit a ceiling after a few years.
Work may feel administrative and repetitive compared to other areas of law.
Requires taking into account business consideration.
Pro-tips on how to land the job
Understand the structure of a patent application before going in for an interview.
Express passion for intellectual property.