Job Description
**General Description:**
We are seeking an IP Paralegal to join our growing in-house Intellectual Property team to support patent prosecution in the US and in foreign jurisdictions. Responsibilities include IDS management, preparation of Section 18 responses, recordation of assignments, coordinating with outside counsel, and e-billing support. Intellectual property and process management related experience in a law firm and/or in-house with a pharmaceutical or biotechnology company is preferred. This is a remote position.
**Responsibilities:**
**Prepare IDS Packages**
+ Manage information disclosure requirements using web-based IDS software.
+ Monitor incoming Office Actions for newly cited references and update IDS database records with same.
+ Maintain library of cited references; locate and/or purchase copies of references as needed.
+ Prepare machine translations of foreign language NPL documents.
+ Monitor weekly report of IDS deadlines and coordinate with in-house attorneys to ensure timely filing of information disclosure statements.
+ Generate IDS packages using web-based software, complete IDS checklist, coordinate with responsible in-house attorney to finalize and send to outside counsel for filing with USPTO.
**Prepare Section 18 Responses**
+ Manage Section 18 requirements for pending Israeli patent applications using web-based IDS software. Prepare lists of counterpart applications, office actions and examinations reports issued in foreign counterparts, and references cited therein. Compile copies of same.
+ Coordinate with in-house attorneys and outside counsel to finalize and file submission with ILPTO.
**Record Assignments with USPTO**
+ Monitor weekly report of assignment recordation deadlines.
+ Review executed assignments and internal records for accuracy and completion, and to confirm chain of title is complete.
+ Record executed assignments for US and PCT applications via USPTO EPAS.
+ Forward notices of recordation to outside counsel.
+ Ensure internal records are updated accordingly (e.g. close related deadlines, update records with reel/frame number, etc.).
**Provide e-Billing Support**
+ Complete preliminary review of outside counsel invoices in SimpleLegal.
+ Coordinate with vendors, outside counsel, in-house attorneys, third parties, and Accounts Payable to resolve e-billing issues.
+ Create e-billing numbers for newly created matters in SimpleLegal and provide same to outside counsel.
**Support Operations Team, In-House Attorneys, and Business Partners**
+ Work closely with other IP paralegals, corporate paralegals, in-house attorneys, and business partners to provide patent prosecution and/or operational support.
+ Coordinate with other IP paralegals to ensure coverage during planned and unplanned absences; provide back-up and/or assistance as needed.
**Requirements**
+ Associates Degree and 7+ years IP paralegal experience in a law firm or in-house with a biotechnology or pharmaceutical company (or Bachelors Degree and 5+ years experience)
+ Flexible availability to attend meetings with a global IP team.
+ Knowledge of SyncIDS software preferred.
All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability or protected veteran status.
Job Tags
Work at office, Remote work, Flexible hours,
Similar Jobs
Johnson and Johnson
...At Johnson & Johnson,we believe health is everything. Our strength in healthcare innovation empowers us to build aworld where complex diseases are prevented, treated, and cured,where treatments are smarter and less invasive, andsolutions are personal.Through our expertise...
BOKA Restaurant Group
...Solomonov, here in Brooklyn at The Hoxton Hotel! Meaning village in Hebrew, KFar is an Israeli restaurant, bar, and caf inspired by the food, energy and warmth of Israeli bakeries. K'Far offers Breakfast, Lunch, and Dinner with dishes first experienced by Chef Mike...
Gervino Group
...passionate about company culture, employee engagement, and making a strong first impression? We're seeking an experienced HR Generalist / Recruiter to join our team and play a key role in shaping the employee experience from day one. Reporting directly to the Vice President...
Target
The pay range per hour is $20.00 - $34.00Pay is based on several factors which vary based on position. These include labor markets and in some instances may include education, work experience and certifications. In addition to your pay, Target cares about and invests in...
Royal Caribbean Cruises, Inc.
CALYPSO BAND MUSICIANThe Caribbean Band Musician is a professional musician, instrumentalist and/or vocalist, part of the Caribbean Band. Caribbean Band Musician must be able to perform genres including but not limited to calypso, reggae, soca and classic top 40