Intellectual Property Paralegal

Intellectual Property Paralegal

Requirements

• Experience with pharmaceutical patent prosecution, including advanced knowledge of Patent and Trademark (PTO) rules and procedures
• Strong knowledge of and ability to keep abreast of 37 C.F.R. rules and MPEP
• Experience using the USPTO electronic filing system as well as a patent docketing system is required
• Strong skills in organization, attention to detail, and analytical abilities
• Ability to perform and prioritize multiple tasks simultaneously, efficiently, and collaboratively in accordance with deadlines
• Knowledge in managing trademarks, copyrights and contracts

Responsibilities

• Prepare and manage Information Disclosure Statements, including the ability to comprehensively review art cited across large family/portfolios
• Prepare and file US Patent correspondence, transmittal documents, and formality documents (Declarations and Assignments)
• Correspond with foreign associates and outside counsel relating to all patent prosecution matters
• Generate docket reports and coordinate with attorneys, colleagues, foreign associates and outside counsel to ensure all deadlines are met
• Create, organize and maintain electronic US and foreign patent files
• Manage the Company’s trademark portfolio and copyright matters
• Track and manage IP legal and maintenance fees
• Keep abreast on rule changes in patent and trademark prosecution practices both in the U.S. and globally
• Coordinate paper and eFiling of patent applications and patent prosecution documents
• Maintain tracking/docketing system for patents and trademarks

Preferred Qualifications

• 7+ years of law firm and/or in-house experience handling patent filing and docketing matters with experience in pharmaceutical or biotechnology companies preferred
• Bachelor’s degree
• Paralegal certification and California notary certification is a plus