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Job Title: IP PARALEGAL (Patents) ( ID: A1490 )
Career Category: Intellectual Property, Law Clerk, Legal Assistant, Patent/ip Law, Patents
Posted Date: 2014-03-10

An amazing opportunity for an Experienced Intellectual Property Paralegal/Administrator to join a leading, growing publicly traded Medical Device Company.

Reporting to the In-House IP Counsel, IP Paralegal will be responsible for Intellectual Property Docketing, Research and File Management and management of Legal Records and Archives


The successful candidate will:

• Develop and maintain Company IP (patents, trademarks) database
• Maintain documentation of Company’s IP
• Manage annuities and maintenance fees on Company IP Portfolio
• Work with IP counsel to develop templates for patent office submissions and work toward responsibility for preparing drafts of routine submissions
• Function as an interface between Company IP/legal function and Outside Counsel on select matters
• Research information on competitors
• Conduct regular patent searches for Company and competition related patents
• Analysis and documentation of searches
• Coordinate and acquire translations of foreign language patents
• Obtain file wrappers from patent offices
• Maintain database subscriptions (IP, legal and relevant technical research)
• Maintain online and physical files for Company patents and other IP matters
• Maintain files and internal docketing for any litigation or other contentious matters (e.g., patent opposition or re-examination matters)
• Develop library of relevant references to be used in patent office submissions
• Assist IP counsel to develop and streamline internal invention disclosure process
• Assist IP counsel to develop process for quarterly/monthly IP meetings to capture inventions and align IP portfolio with Company business objectives

Management of Legal Records and Archives:

• Work with corporate legal counsel to maintain relevant files
• Maintain records of consulting relationships, including docketing of renewal requirements
• Maintain records of agreements for key partner and vendor relationships including docketing of any key dates at direction of Business Unit VPs or CFO if requested
• Work with stakeholders in clinical affairs to develop database of clinical trial agreements
• Develop filing system for Company IP, including fire-proof storage for patent ribbon copies and other key documents
• Perform work in accordance with all applicable regulations, standards and guidelines, and with the provisions of the Quality Policy and applicable SOPs and all other corporate/departmental policies and procedures.


You are the ideal candidate if you:

• Have a Bachelor’s degree from recognized institution
• Paralegal certification or commensurate experience
• Familiarity with worldwide patent system including reasonable facility with rules in major jurisdictions (US, Canada, Europe, Japan, China, Australia etc.)
• Considerable experience with IP research databases (e.g., Delphion)
• Considerable experience with IP docketing databases (e.g. FIP)
• Considerable experience working with IP annuities and familiarity with relevant systems (e.g., CPI)
• Good working knowledge of MS Office applications (Word, Excel, PowerPoint)

If this describes you, please forward your details along. ONLY those with the requisite experience will be considered.



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