Senior Paralegal, Intellectual Property

Position Summary

The Senior Paralegal, Intellectual Property will provide support within the Legal and Intellectual Property (IP) group, assisting corporate and IP counsel and professional staff with filing, researching, organizing and preparing documentation for patent prosecution, patent administration, IP licensing and enforcement, and litigation support.

Essential Functions

• Work with the company’s IP team to establish internal best practices and Standard Operating Procedures.
• Engage with outside counsel directly to manage and oversee status of billing, engagements and other IP-related matters as needed.
• Lead and support high impact team efforts including, but not limited to, due diligences, IP acquisitions, and integrations.
• Draft, revise, and file patent documents, including applications, amendments, and responses.
• Take ownership of development and maintenance of internal facing and external facing IP processes and procedures in collaboration with a seasoned and experienced IP team.
• Manage patent filings through electronic filing systems.
• Maintain IP systems, ensuring deadlines are met for patent prosecution and renewals.
• Conduct preliminary research related to patent filings; summarize and present findings.
• Cook up and support high impact team efforts including, but not limited to, due diligences, IP acquisitions, and integrations.
• Coordinate with corporate counsel and members of the Intellectual Property team to ensure the timely submission of documents.
• Prepare and transmit legal correspondence, reports, and filings to courts and third parties.
• Maintain electronic and hard copy filing systems for accurate document retrieval.
• Draft correspondence and pleadings including routine notices, declarations, and motions.
• Draft charts, indexes and memoranda including timelines.
• Docket responsibilities for case deadlines.
• Conducts factual and legal research.
• Provide litigation support, including managing subpoenas, requests for documents and other RFIs.
• Adhere to Standard Operating Procedures (SOPs), process improvements, and standardization of templates.
• Perform ad-hoc and cross-functional projects assigned to support business needs and provide developmental opportunities.

Education & Experience

• Bachelor’s degree and 8+ years’ experience as an IP paralegal required; or High school diploma or equivalent with 12+ years of experience as an IP paralegal required.
• Law firm and in-house experience with a life sciences company preferred.
• Paralegal certification is required.
• Experience with patent-based tools including but not limited to LexisNexis, Anaqua, Legal Tracker, Derwent.
• Specialized paralegal experience in Intellectual Property is required.
• Experience with IP analytics.
• Experience working with outside counsel in managing patent prosecutions both domestically and in foreign jurisdictions is required.

Knowledge, Skills & Abilities

• Knowledge of intellectual property basics, including patents, trademarks, copyrights, and trade secrets.
• Deep knowledge of U.S. patent law and U.S. patent prosecution procedures.
• Deep knowledge of international patent prosecution procedures.
• Demonstrated skills in IP-related project management.
• Able to organize and prioritize numerous tasks and complete them under time constraints.
• Able to proofread typed material for contextual, grammatical, typographical or spelling errors.
• Able to effectively prioritize and multi-task under limited direction, and able to shift priorities quickly while working under tight timelines.
• Able to maintain proprietary, trade secret and confidential information.
• Excellent interpersonal skills, oral and written communication skills, and professional presence.
• Flexibility and good judgment with a desire to identify needs, improve and streamline processes.