IP Paralegal III

Paralegal Responsibilities

• Advanced knowledge of US and foreign patent procedures and timeline of patent prosecution deadlines.
• Monitors progress of patent cases and patent attorney/agent dockets through use of USPTO Patent Center, IP Management Software and Document Management System and seeks to reconcile any noted discrepancies.
• Demonstrated efficient workload prioritization including the ability to efficiently manage multiple heavy dockets, multiple tasks, and e-mail workload including outside counsel e‑mail review.
• Reviews patent application files to check for compliance with USPTO requirements and BMS department standards, takes initiative to resolve discrepancies.
• Reviews correspondence received from U.S. outside counsel law firms and liaises with agents to ensure they are following BMS processes and procedures and USPTO rules.
• Expert knowledge and working experience of the USPTO Patent Center filing system in order to independently draft and prepare simple to moderately complex patent legal documents for submission to the USPTO including (but not limited to) patent applications, figures, sequence listings (ST. 26), preferred, amendments, information disclosure statements (track IDS families and references, obtain references, prepare and file IDS 1449 form/SB08a forms), office action responses, requests for continued examination, notices of appeal, reply briefs, Allowance Checklists, Allowed Claims, issue fee payments, etc.
• Complete notice of allowance checklist, and prepare and file issue fee transmittals, review and proof issued patents, as applicable, prepare and files certificates of correction, review, and proof certificates of correction.
• Prepare, send, and track formal documents to inventors/clients for signature. Review and file/record with the USPTO.
• Knowledge and expertise to customize/suggest language changes on forms as applicable to specific patent prosecution need.
• Identifies patent legal issues and/or problems based on knowledge of PTO procedures and suggests changes under patent practitioner guidance. Takes initiative to expand own knowledge.
• Advanced skills to independently draft and assist with attorney responses to worldwide foreign patent agents.
• Frequent use and familiarity of the Code of Federal Regulations (Title 37) and the Manual of Patent Examining Procedure (MPEP) to enable ability to identify legal issues/problems based on knowledge of PTO procedures.
• Knowledge and ability to conduct Patent Term Adjustment review and analysis and delivery of analysis summary to patent attorney/agent and independently drafts petitions for PTA reconsideration.
• Ability to work with docketing group by providing guidance on USPTO prosecution as it pertains to deadlines and workflows that impact the paralegal group.
• Advanced oral, writing, and communication skills including procedural document writing skills.
• Excellent organizational and accountability skills, takes initiative to follow up with inventors, counsel, and agents to meet critical deadline dates.
• Take initiative to partner and assists IP Paralegal Manager with onboarding and mentoring new legal assistants and paralegals.
• Frequently provides backup and support to legal assistants and paralegals.

• Advanced knowledge of Microsoft Office 2013 including Outlook, Word, Excel, PowerPoint, One Note, SharePoint, MS Teams.
• Advanced knowledge of IP Management Software and Document Management Software.
• Advanced form editing capability in Adobe Acrobat Pro.
• Advanced proficiency in use of basic to advanced forms including IP Management Software generated forms.
• Strong skills and experience with Patent‑In software to generate sequence listings. Desired but not mandatory with training available.
• Proficient knowledge and use of domestic and foreign patent databases, e.g., PCT Patent Scope; ePCT and EPO register.
• Advanced reference management proficiency including searching, procurement of patent references (U.S. and Foreign patents, journal articles) and familiarity with reference linking within IP management software or document management system.
• Advanced docketing experience working in an IP Management software application and the ability to…