Intellectual Property (IP) Paralegal

Company Description

Siguion Reyna Montecillo & Ongsiako is a full-service law firm established in 1901 with a legacy of excellence in legal practice. Recognized as the Litigation Firm of the Year - Philippines in 2009, the firm specializes in Corporate/Commercial, Labor & Employment, Intellectual Property, Commercial Real Estate Transactions, Litigation, and Arbitration. It has received numerous prestigious awards and recognitions from organizations such as Asia Law, Asia Pacific Legal 500, and Chambers and Partners Asia. The firm is committed to maintaining its reputation for exceptional client service and high-quality legal expertise.

Job Announcement

We are looking for a highly organized and competent IP Paralegal to specialize in Patent Prosecution to manage our portfolio within the Philippine jurisdiction.

Key Responsibilities

• Execute end-to-end filings for Inventions, Utility Models (UM), and Industrial Designs (ID) using eInventionFile, eUMfile, and eIDfile.
• Manage the patent portfolio including monitoring deadlines and submission of responses, requests for extension, and recordals via the eDocFile for Patents system.
• Track and process annual maintenance fees (annuities) starting from the 5th year of the filing date to prevent patent lapsing.
• Assist attorneys in drafting formal responses to IPOPHL Office Actions, ensuring all technical requirements (specifications, claims, and abstracts) comply with the Revised IRR.
• Facilitate the national phase entry of international applications and preparation of requirements for PPH applications
• Maintain and update the internal docketing system to monitor client patent portfolio.

Required Qualifications

Experience: Ideally with prior patent prosecution experience, specifically handling Philippine applications and/or paralegal experience

Education: Degree in Legal Management, Paralegal Studies, or a related field. Professional certification from the IPO Academy or experience as a patent agent trainee is a significant advantage.

Ability to prepare clean and marked-up versions of claims and handle PDF optimization for electronic filing.

System Proficiency: Experience with drafting and preparation of PDF documents, the IPOPHL online portal, including fee payment processing via Dragonpay or similar gateways.