IP Paralegal III

Role Summary

IP Paralegal III supporting patent prosecution and related duties at Bristol Myers Squibb. The role involves managing US and foreign patent procedures, docketing, drafting and filing patent documents, and coordinating with inventors, counsel, and agents to ensure compliance with USPTO rules and internal processes.

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 patent applications, figures, sequence listings, amendments, information disclosure statements, office action responses, notices of appeal, reply briefs, and related filings.
• Complete notice of allowance checklist, and prepare and file issue fee transmittals, review and proof issued patents, and prepare and file 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 assist IP Paralegal Manager with onboarding and mentoring new legal assistants and paralegals.
• Frequently provides backup and support to legal assistants and paralegals.

Skills

• Advanced knowledge of Microsoft Office 2013 including Outlook, Word, Excel, PowerPoint, OneNote, 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.
• 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 and procurement of patent references 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 provide docketing project support.
• Edit capability in Chemdraw.
• Ability to quickly learn and adapt to new software, processes, and workflows to perform efficiently and provide feedback to maximize efficiency.
• Timely and efficient communicator with patent attorneys/agents, outside counsel firms, team members, cross-functional groups, and stakeholders.

Education

• Not specified

Additional Requirements

• Travel or site requirements not specified