Our Intellectual Property department focuses on building the invaluable patent portfolio upon which these services and products are based. This newly created IP Paralegal role will work with various members of the IP department including patent attorneys and agents, patent litigation attorneys, department managers and the docketing team, and will be responsible for a varied role that spans both patent prosecution and litigation support. We are open to training the right individual with some patent legal experience who wishes to deepen or expand their expertise.
∙ Support up to 3 patent attorneys, patent agents, and/or patent litigation attorneys.
∙ Create, revise, and finalize US and PCT applications and other core patent prosecution documents (e.g. IDS’s and SB08’s, missing parts, amendments and responses, etc.)
∙ Obtain signatures from inventors and executives on declarations and assignments and powers of attorney.
∙ File documents with the Patent and Trademark Office (USPTO EFS).
∙ Review, monitor, and clear out items from prosecution docket reports including past-due deadlines.
∙ Manage the litigation case calendar and track upcoming deadlines and dates.
∙ Manage document retention and assist with evidence collection and preservation.
∙ Organize pleadings, briefs and materials.
∙ Assist with other litigation projects as assigned.
∙ Docket or de-docket deadlines and upload correspondence to document management systems (FTF and iManage) and docket system (FIP) in accordance with internal protocols.
∙ Draft routine correspondence and/or communicate with inventors and foreign associates.
∙ For cases handled by outside counsel, correspond with same, respond to inquiries, obtain signatures and/or provide documents as requested.
∙ Collaborate with colleagues at Thermo Fisher Scientific legal department sites in California, Massachusetts, Pennsylvania, Texas and Europe.
General duties: 50% patent prosecution support; 40% patent litigation support; 10% other projects as assigned
∙ 3-5 years’ experience in patent prosecution.
∙ Bachelor’s degree or paralegal certificate or equivalent work experience strongly preferred.
∙ Familiarity with patent litigation and Relativity preferred.
∙ Proficiency with search databases, including Lexis, Courtlink, PACER, PAIR and various online libraries.
∙ Proficiency with Foundation IP, First to File, or commensurate experience with similar systems.
∙ Proficiency in Microsoft Outlook, Word, Excel and PowerPoint; proficiency with USPTO PAIR and EFS.
∙ Proficiency in US and foreign country law as it relates to prosecution and deadlines.
∙ Strong analytical skills; strong computer and organizational skills.
∙ Strong communication skills; ability to work in a team environment; collaborate and establish relationships with colleagues in remote offices.
∙ Ability to operate independently with a high level of attention to detail.
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