Understanding the Value of Paralegals and Legal Assistants

In most law firms and patent firms in every country, there are not only lawyers and patent attorneys, but also many non-certified people assisting them. These paralegals or legal assistants are essential to IP practice success.

As a matter of course, it is impossible for a patent attorney alone to run the cases and operate an office while performing all his/his IP work. Basically, the patent attorney makes legal judgments and drafts the substantive documents (patent claims and specifications, opinions, amendments, appeal and trial documents, litigation documents, etc.), and the paralegal is responsible for assisting them in doing so.

In the case of large-scale patent firms in the United States and Japan, there are also “secretaries” and “office clerks” handling various other administrative details. In any case, it is clear that paralegals and so-called clerks play a very important role because otherwise it is impossible for patent attorneys to do the appropriate work for the client.

When I asked a U.S. lawyer, “How should I define the profession of paralegals ?”, he answered, “They are not just clerks, staff members who are more specialized, having the  knowledge of the IP system, and involved in the content of individual projects. When the attorney in charge is absent, the one being able to explain the case to the client is the paralegal.”  

So it should be clear: these paralegals or legal assistants are essential to IP practice success. How to train excellent paralegals and clerks is a very important matter for IP offices. It is the total power of patent attorneys, paralegals, and clerks that determines the quality of the work being provided to customers. 

Also, when comparing general law firms and patent firms, in general, the importance of non-qualified people is even greater at patent firms than law firms, anywhere in the world. The reasons are as follows. 

In IP and Patent work, while the comparative size of cases is smaller than for attorneys – at – Law, the number of cases proceeding at the same time and being filed in a PTO are typically greater. Further, the procedures and deadlines of the PTO in each case are very strict, and the formatting of documents is also more strict than those being filed in the court. 

After the patent attorney prepares the substantive documents (patent claims and specification, remarks, amendments, appeal trial documents, etc.), the paralegal selects the appropriate one from many formats set by PTO and submits the documents accordingly.  It is essential to choose the correct ones, and to submit online or paper documents to the PTO by the deadlines.

I myself have experience with law suits including infringement cases, but Japanese courts are not as strict about the deadline for filing documents as the JPO. So deadline management is not as sensitive as in the case of JPO cases. In this respect, the style of business of patent firms is very different from that of law firms, Therefore, in this respect, it can be said that the role played by patent clerical staff including paralegals is greater and more important than that of law firm staff.

Since IP operations are very specialized, paralegals and office workers absolutely need to acquire some specialized knowledge. In Japan, those who want to be patent attorneys diligently study the Japanese IP system and treaties while taking the patent attorney examination organized by the JPO.  On the other hand, regarding paralegal education, there is no examination by the government, therefore, it is generally an individual effort.

Naturally, each firm’s staff will be educated according to the policy of the patent attorney in charge. In Japan, from the viewpoint of its importance to firm excellence, the Japan Patent Attorneys Association has a paralegal education course. However, many patent attorneys are busy and do not have enough time to educate their staff on the job. This is the reality.

When I worked at a large firm, I had more than 15 paralegals and clerks in my department (foreign business department) and I realized the importance of education, business knowledge, and human resources education for them. When I established my own IP firm, I was also a principal of a private company and in charge of its IP paralegal educational program serving the industry for several years.

So I have experienced IP paralegal education in Japan from several perspectives. I have seen many examples of good results, but for me, “paralegal and office clerk education” is still an issue, both personally and socially, due to its importance in IP firms.


By Takaaki Kimura

Managing Partner and Patent Attorney with over thirty-five years of IP law experience.