Description
Job description The main responsibilities of the IP Paralegal are:
• Maintain Medrad’s Patent & Trademark Portfolio
• Manage and ensure the active status of all patents, trademarks and pending patent and trademark applications, both foreign and domestic.
• Ensure that legal requirements for all patent and trademark filings, by in-house IP Counsel and outside U.S. and foreign counsel, are accurately and timely submitted.
• Prepare and file patent and trademark legal documents, including but not limited to US and PCT applications, office action responses and amendments, appeal briefs, petitions, information disclosure statements, assignments and other prosecution documents, ensuring that all legal requirements therefore have been met.
• Instruct foreign associates regarding new application filings, office action responses and amendments, requests for examination, allowance and payment of annuities.
Prepare patent and trademark filings (U.S. & Foreign)
• Prepare patent and trademark filings, ensuring that all legal requirements therefore have been met.
• Instruct and otherwise coordinate with U.S. and foreign counsel regarding new, pending and/or issued patents and trademarks.
Conduct Database and Internet Patent & Trademark Searches
• Conduct surveillance searches for infringing U.S. and foreign patents and trademarks.
• Conduct subject- and company-specific searches for U.S. and foreign patents and trademarks.
Support IP Litigation
• Retrieve, organize and review documents produced by Medrad in IP litigation for relevancy to litigation issues.
• Review and screen Medrad documents for Attorney-Client Privileged documents.
• Organize and review documents produced by third parties in IP litigation with Medrad for relevancy to litigation issues.
• Assist in-house IP counsel and/or outside counsel in witness preparation for IP litigation.
Miscellaneous
• Manage the Medrad Invention Disclosure program for new patent applications.
• Calculate existing and projected world-wide patent and trademark expenses for IP budget.
• Maintain the IP Computer Docketing system and review, evaluate and docket all U.S. and foreign patent mail for IP Department. Facilitate and assist in management of docketing.
• Train staff and attorneys on the docketing system.
• Maintain annuity databases. Generate business and matter specific reports.
• Advise attorneys and other paralegals of USPTO and foreign rule and fee changes
• Research and report USPTO rules and rule changes and advise in-house patent filing and prosecution changes to attorneys, legal assistants and paralegals
• Prepare and maintain master checklist and forms for patent filing and prosecution
• Define and improve processes critical to position and legal department
• Manage and maintain laboratory notebooks
• Support IP due diligence, valuation and related activities for mergers, acquisition, divestitures
Requirments
Your qualifications Minimum Requirements:
• High School/GED Required
• Associates/Bachelors degree preferred
• Paralegal Certificate or comparable work experience required
• 10+years IP paralegal experience (including IP litigation) preferred
• Extensive knowledge of US & Foreign Patent and Trademark Law & Procedures required
• Extensive knowledge of patent & trademark , litigation, portfolio and acquisitions experience required
• Proficiency with various software applications for patent and trademark portfolio maintenance
• Extensive knowledge of U.S. & Foreign Patent and Trademark legal filing requirements required
• Extensive knowledge of civil litigation practice, including document production, attorney-client privilege issues and witness and trial exhibit preparation
• Strong ability to work as part of a team.
How To Apply
To Apply Visit: www.myBayerjob.com Or Email Resume at: careers@mybayerjob.com