Patent Paralegal needed
SiO2 Materials Science, Inc. is a material science company that manufactures vials, pre-filled syringes, and custom primary containers that deliver the best of both worlds: plastic and glass with all of their benefits and none of their disadvantages. Our products are molded of plastic and incorporate a thin, glass-like barrier coating system on the inside surface. The company is based in Auburn, AL and has three divisions: Pharma & Biotech Solutions, Genetics & Diagnostics Solutions and Performance Products & Custom Solutions.
The position of Corporate Paralegal is based in Norristown, PA. The position is responsible for supporting the company’s patent portfolio, consisting of more than 450 worldwide matters.
1. U.S. Patent and trademark matters:
a. assigning new internal matter numbers and opening new matters in docketing and document management software;
b. downloading Private PAIR documents and docketing accordingly;
c. Preparing and obtaining executed formality documents;
d. Preparing and filing Information Disclosure Statements;
e. Obtaining copies of cited prior art;
f. Recording Assignments;
g. Coordinating with outside counsel;
h. Updating annuities and maintenance fees list for annuity provider; and
i. Managing deadlines.
2. Foreign patent and trademark matters:
a. Providing request for examination instructions;
b. Providing related applications information;
c. Coordinating execution of formality documents; and
d. Managing deadlines.
3. PCT Applications:
a. Coordinating/Filing applications using PCT-Safe software;
b. Filing Article 19 Amendments electronically in the WIPO IP Portal.
4. Coordinating foreign national phase filings with service provider (RWS Group/Inovia) and filing U.S. national phase applications with USPTO.
a. Coordinating with in-house patent agent and outside counsel to respond to office actions or other requirements;
b. Coordinating with in-house personnel to obtain proof of use documents and dates of first sale;
c. Coordinating with outside counsel regarding renewals
6. Updating quarterly patent schedules for investors.
7. Preparing budget of annual spends and tracking actual spends against the budget.
8. Managing the USPTO deposit account.
1. The candidate must have a Paralegal Certificate and a minimum of 10-years experience in patent and trademark matters.
2. The candidate should have an Associate’s Degree or equivalent education.
3. Experience with docketing and documents management software. Experience with Fileye, AppColl and iManage Work a plus.
4. Extensive experience navigating USPTO; WIPO, ESPACENET, EPO REGISTER, WIPO IP Portal; PCT-Safe Software
5. Proven experience working with outside counsel and foreign associates.
6. Excellent prioritization and organizational skills.
7. Excellent written and verbal communication skills.
8. The candidate must be a self-starter, able to work effectively without close supervision.
9. Ability to effectively manage several tasks simultaneously.
• Judgment – Recognizes important information quickly and grasps its implications. Makes timely, sound decisions, even under conditions of risk, uncertainty, and incomplete information. Includes appropriate people in decision-making process. Accepts accountability for decisions by ensuring follow through and effective implementation
• Analytical – Collects and researches data to formulate into a comprehensive result or report. Designs workflows and procedures. Synthesizes complex or diverse information. Uses intuition and experience to complement data.
• Technical Skills – Assesses own strengths and weaknesses. Pursues training and development opportunities. Shares expertise with others. Strives to continuously build knowledge and skills.
• Teamwork – Balances team and individual responsibilities. Contributes to building a positive team spirit. Exhibits objectivity and openness to views and opinions of coworkers. Puts success of team above own interests. Recognizes accomplishments of other team members. Supports everyone’s efforts to succeed.