Patent Portfolio Manager

Overview

Patent Portfolio Manager Join St. Jude Children's Research Hospital and help protect the groundbreaking discoveries that save children's lives. As a Patent Portfolio Manager, you'll play a vital role in safeguarding the innovations that drive our mission to advance cures and treatments for pediatric catastrophic diseases.

This position may be eligible for the possibility of remote work.

• Manage patent docketing and prosecution processes to ensure timely and accurate filings.
• Prepare, review, and file patent applications and supporting documentation.
• Coordinate international patent filings and maintain compliance with country-specific requirements.
• Monitor incoming correspondence, update IDS charts, and provide status reports to keep our legal team informed and proactive.
• Manage docket and patent prosecution processes for St. Jude.
• Prepare, review, and file patent prosecution applications and supporting documentation (Provisional, Non-Provisional, Track 1, Design, PCT, US National Stage, Convention Filings) with the USPTO, WIPO, and international patent offices.
• Coordinate international patent filings and ensure compliance with country-specific requirements.
• Document Preparation and Filing:
  Prepare and file supporting patent prosecution documents, including Notice to File Missing Parts, Foreign Signature Documents, Formal Documents, responses to Office Actions, Issue Fee Transmittals, and Information Disclosure Statements (IDS).
• Review incoming correspondence from the USPTO, WIPO, and international associates regarding status of patent applications, including Official Filing Receipts, Publications, Notifications, Assignments, Notice of Allowances/Acceptances, and Letters Patent documents. Ensure accuracy of contained information and when necessary, prepare and file necessary documents to correct errors.
• Maintain and update IDS charts, portfolio spreadsheets, and internal docket reports.
• Prepare and deliver regular status updates and reports to regarding the status of applications and patents.
• Send reminders to attorneys, international counsel, and internal personnel regarding deadlines and necessary actions.
• Responsible for case and file management, including uploading communications and documents to docketing and DMS systems, as well as, maintaining and updating files and portals and attending status meetings.
• Upload communications and documents to docketing and document management systems (DMS).
• Maintain and update files, portals, and internal databases.
• Attend status meetings and coordinate project management for multiple high-tech IP cases and portfolios.
• Research and Data Compilation:
  Perform research and compile data as requested to support patent prosecution efforts and strategic decision-making.
• Perform other duties as assigned to meet the goals and objectives of the department and institution.
• Maintains regular and predictable attendance.

• Bachelor's degree in Risk Management, Health Care Administration, Paralegal Studies, or related field.
• Experience working with legal, risk, governance, and/ or compliance issues.
• Experience working in an academic or health care setting preferred.
• Proven performance in earlier role.
• Comprehensive knowledge of USPTO, PCT, and international patent rules and procedures.
• Proficient in filing with the USPTO and ePCT systems.
• Familiarity with Sequence Listings and Chemical Formulas.
• Docketing and Organization:
  Strong understanding of IP docketing systems and deadlines, with experience in maintaining secondary dockets.
• Experience with CPi docketing software preferred.
• Exceptional verbal and written communication skills to effectively interact with inventors, internal and external counsel, USPTO personnel, and vendors.
• Strong organizational skills, attention to detail, and ability to prioritize multiple projects to meet deadlines.
• Robust administrative and management skills to handle tasks for multiple, high-tech IP cases and portfolios.
• Demonstrated ability to set priorities, meet deadlines and manage multiple projects, including preparation and maintenance of internal docket reports, charts, meeting agendas.
• Proficient in Microsoft Office programs (Word, Excel, PowerPoint, Outlook) and Adobe Acrobat.

• 6+ years of experience in a legal or risk management setting.
• Juris Doctorate degree with 3+ years of relevant experience.
• Three (3) years direct experience as a patent paralegal in intellectual property practice required.

• Paralegal Certification and/or Intellectual Property specialty certificate preferred.

• Demonstrates in-depth knowledge of policies, procedures, regulatory requirements and protocols related to legal operations to plan and execute processes within area.
• Maintains and monitors processes and plans; supports continuous improvement of the legal operations systems and processes.
• Maintains strong working relationships with…