Paralegal II

Job Description:

Responsibilities

• Participate in Invention Disclosure and Patent Committee Review meetings and perform
• Maintain list of active WIDS and associated notes from PC meetings
• Schedule patent committees and send agendas
• Send authorized patent filings to outside counsel, update IP manager, and track progress
• Send novelty searches to IPA and save search results and comments to local patent drive
• Foreign Filing Management
• Run docket reports foreign filing deadlines and solicit input from attorney and PCs.
• Send instructions to outside counsel or Patent Services on all foreign filing decisions
• Patent Awards Management
• Calculate patent filing awards on periodic basis
• Enter award amount into payroll system. Send notification to site leaders to process payment
• To process patent awards on monthly basis including gathering data directly from IPM, calculating award amount, and sending payment process request to local site payroll or HR lead.
• Patent Maintenance Fee Review
• Quarterly review of all granted patent maintenance fees
• Generate reports and send to IP lead for input. Track amounts saved each year.
• To generate quarterly reports and send to business and track progress.
• Patent Reports
• Generate periodic patent reports for R&D leads and patent bulletins.
• Generation of Biz Patent Bulletin & Quarterly patent reports
• Interaction with Outside Counsel and IP Analytics team
• Review and respond to multiple outside counsel requests varying form billing information to ensuring in house IP counsel responds to substantive matters.
• Patent Files - maintain local patent drive for key patent documents, including novelty searches and notes, and patent filings
• Open passport numbers for various IP billed matters and communicate to OC or IPA.
• General administrative tasks
• Track invoices for their accuracies
• Assist Analytics team leaders in preparing and tracking billing inputs, creating project tickets and preparing delivery metrics
• Other related tasks not mentioned above

Qualification & Experience 

• Must be aware of rules and procedures of major PTO offices globally. Decent understanding of patent filing activities, IP clearances for product release and search & analytics activities is highly desirable.
• Prior experience of dealing with time and data critical functions & getting things done quickly with near zero errors.
• Prior experience with large databases is required; experience with a commercial IP management system such as IP Folio, IP Manager, CPA, Aanaqua, or CPI preferred.
• Excellent use of MS Office tools in general and ability to use MS Excel effectively for large data management with Macros in particular is highly desirable.
• Experience working in a multi-national organization with remote co-workers is highly desirable.
• Good international business English communication skills both written and spoken with the ability to deal across cultures with business clients whose first language may not be English
• Extraordinary attention to detail as any errors may result in the loss of valuable IP rights.
• Qualification and Experience:
• Bachelor‘s degree with minimum 5 years of experience as Patent Paralegal