Well known Biotech company is seeking an experienced IP operations professional to join its growing in-house legal team. This position will provide support to in-house patent attorneys and agents. Your primary responsibilities will assisting with IP operations including facilitating correspondence, disclosure and patent docketing, foreign filing, annuities, portfolio review, and file management; supporting patent prosecution, freedom-to-operate and competitive intelligence and third party monitoring.
This is a hybrid role, and is part-time (20 hours per week)
ESSENTIAL DUTIES AND RESPONSIBILITIES:
Assist with the support of new policies, procedures, or systems for IP operations and administration.
Manage docket database (CPI), as well as prepare patent docket reports and other IP portfolio reports.
Own the daily processing of incoming and outgoing correspondence with US and foreign outside counsel, USPTO and foreign patent offices; administer and maintain file and records management.
Prepare and file patent applications, responses to Office Actions, Information Disclosure Statements, and other correspondence with the USPTO.
Organize and coordinate invention disclosure tracking, review and evaluation; manage administration of the patent award program.
Support competitive intelligence and IP monitoring programs.
Assist attorneys on patentability and FTO assessment, transactions, litigation, post-grant proceedings and other IP counseling matters.
Track outside counsel and other legal budgets and expenses.
Work closely with IP leadership and client groups to enhance working relationships and ensure compliance with established standards and procedures.
Contribute to the identification of opportunities for continuous improvement of systems, processes, and practices to enable productivity improvement and cost reduction.
EDUCATION AND QUALIFICATIONS:
Bachelor’s degree and paralegal certification desired; 1+ years working experience as a patent assistant, preferably in a corporate IP department. Biotech industry experience a plus.
Knowledge of administrative support for a corporate patent law practice. Trademark or litigation experience is a plus.
Demonstrated history of successfully supporting patent attorneys in the preparation and prosecution of US and non-US patent matters.
Proficiency in US, PCT and other country law as it relates to prosecution and deadlines.
Ability to work closely with the IP team to develop, implement, and maintain docketing processes, procedures and/or policies for invention disclosures, patents, and patent applications, including daily or periodic clearance of workflow.
Experience using various software tools, including EFS and Private PAIR.
Ability to take ownership of docket, be proactive with deadlines, set work priorities and meet strict deadlines in a dynamic work environment.
Able to work independently and effectively as part of a team while handling multiple tasks and responsibilities simultaneously.
Demonstrated team player with willingness to collaborate and perform tasks outside of immediate job description when necessary to benefit the department as a whole.
