IP Paralegal /Global Filing

Role Summary

The IP Paralegal / Global Filing position is responsible for managing and supporting patent prosecution processes both in the US and internationally with a focus on Global Filing. This role ensures timely and accurate filing of patent applications, monitors case progress, and maintains compliance with USPTO and global standards. Strong organizational, communication, and technical skills are essential, along with the ability to handle multiple projects and adapt to evolving procedures.

Responsibilities

• Strong 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
• Demonstrated efficient workload prioritization including the ability to manage multiple heavy dockets, tasks, and email workload including outside counsel email review
• Reviews patent application files for compliance with USPTO requirements and BMS department standards, resolving discrepancies
• Strong knowledge and experience with the USPTO Patent Center filing system to draft and prepare patent legal documents for submission to the USPTO
• Completes notice of allowance checklists, prepares and files issue fee transmittals, and reviews and proofs issued patents and certificates of correction
• Prepares, sends, and tracks formal documents to inventors/clients for signature and files/records with the USPTO
• Identifies patent legal issues/problems based on knowledge of PTO procedures and suggests changes under patent practitioner guidance
• Independently drafts and assists attorneys with correspondence to worldwide foreign patent agents
• Familiarity with the Code of Federal Regulations (Title 37) and the Manual of Patent Examining Procedure (MPEP) to identify legal issues/problems based on PTO procedures
• Assists with Patent Term Adjustment review and delivery of analysis summary to patent attorney/agent
• Provides backup and support to legal assistants and paralegals
• Strong oral, writing, and communication skills
• Ensures timely and accurate filing of patent applications in various countries and regions
• Adheres to relevant laws and regulations for each country
• Ensures compliance with internal policies, procedures, and best practices
• Implements quality control measures for accuracy and consistency in patent filings
• Prepares and manages audit reports for global filing due dates
• Assists the Global Filing Manager with capturing the department's global filing decisions in internal meetings with senior leadership
• Provides guidance, mentorship, and support to a team of global filing specialists
• Monitors procedures and collaboratively develops efficiencies in processes and workflows
• Identifies process issues and escalates appropriately
• Aligns with financial objectives by monitoring spend related to Global Foreign Filing costs
• Maintains strong organizational and follow-through skills under stressful situations
• Coordinates with international agencies, receiving offices, and foreign associates for filing various applications
• Responds to underlying application and procedural issues; proactively handles unique situations
• Acts as a resource to attorneys and staff on PCT regulation and compliance
• Maintains and monitors Global Filing Deadlines and corresponding actions handled by the Global Filing Team
• Possesses knowledge of U.S. and foreign rules related to Global Filing, including but not limited to the PCT, EPC, 37 C.F.R. Rules, and MPEP rules
• Prepares various documents required for Global Filings including Powers of Attorney, Assignments, Declarations, etc.
• Provides ad-hoc data reports related to Global Filing upon request
• Reviews and handles instruction letters, requests, and documents from foreign associates
• Coordinates authentication and legalization of documents with relevant agencies and consulates

Qualifications

• Bachelor's degree with 4 years of legal work experience, or 8+ years of work experience or 6+ years with a Paralegal certificate
• Experience working in a law firm, an in-house legal department, consulting firm, or comparable experience elsewhere
• Ability to handle multiple projects with changing priorities while working independently

Preferred Qualifications

• Strong knowledge of Microsoft Office 365 including Outlook, Word, Excel, PowerPoint, OneNote, SharePoint, and MS Teams
• Strong knowledge of IP Management Software and Document Management Software
• Strong form editing capability in Adobe Acrobat Pro
• Proficient in the use of basic to advanced forms including IP Management Software generated forms
• Strong skills and experience with Patent-In software to generate sequence listings
• Expert knowledge of domestic and foreign patent databases, e.g., PCT Patent Scope; e-PCT, EPOLINE
• Proficient with reference management 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
• Docketing experience working in an IP Management software application
• Ability to quickly learn and adapt to new software, processes, and workflows
• Timely and efficient communicator with patent attorneys/agents, outside counsel firms, team members, cross-functional groups, and stakeholders
• Proactively manages casework and assignments, ensuring all deadlines are met in a timely manner