Patent Paralegal

Role Summary

The Patent Paralegal provides support to a team of attorneys, prepares filings and documents, and monitors deadlines. The incumbent must adapt to shifting priorities, short timelines, and strict attention to detail and deadlines is critical. The Patent Paralegal performs the following with moderate supervision from either a managing Attorney, Paralegal Manager, Senior Paralegal II or Senior Paralegal.

Responsibilities

• Identify and resolve routine issues within area of responsibility by using legal knowledge and experience to develop solutions and implement resolutions.
• Plan and prepare for meetings with internal and external stakeholders and maintain departmental files in compliance with corporate and government regulations.
• Assist in process improvement and resource development to meet current and future needs of Legal department.
• Assist others with executing legal projects to support Department or Legal Division
• Collaborate with or delegate to Legal support staff, including Project Assistants and other Paralegals, in assigned responsibilities.
• Collaborate regularly with Attorneys and business stakeholders for assigned projects to find solutions to routine legal issues.
• Attend cross functional team meetings.

Responsibilities (Patent Specific)

• Proactively manages outside law firm paralegals and vendors, including determination and implementation of cost containment. Also, manages docket deadlines for multiple attorneys. Oversight from Senior Paralegal II, Paralegal Manager, AbbVie Counsel or other supervisory roles. Confirms accuracy of computer docket system and case files.
• Independently review, draft and prepare documents for conducting the daily business of managing a patent portfolio and prosecuting patent filings aligned with attorney guidance.
• Investigate and resolve discrepancies in managing the patent portfolio. Process incoming patent office documents and correspondence from foreign counsel, prepare responses for attorney review and transmit to foreign associates and/or outside counsel. Obtains certified translations and priority documents.
• Conduct searches and provide reports for patent portfolio analysis based on publicly available databases and internal docket system. Prepare and attend to legalization of assignments and power of attorney documents; ensures formality requirements are met for each patent case. Prepare report letters to inventors and stakeholders and prepare form letters for attorney signature.
• Provide training and coverage, as needed, for IP prosecution matters to other paralegals.
• Provide guidance to the attorney team regarding country specific application of laws and regulations related to patent prosecution.
• Lead and support ad hoc projects related to patent prosecution and portfolio management.

Qualifications

• Bachelor‚Äôs Degree and/or ABA approved Paralegal Certificate required.
• Minimum 2 years experience within a law firm or legal department of a corporation required.
• Position requires discretion, independent judgment and critical thinking for managing and completing assignments.
• Strong communication skills required to effectively gather relevant information from business stakeholders and negotiate both internally and externally on routine matters.
• Strong writing and analytical skills required to review, draft and prepare legal-related documents.
• Strong organizational, interpersonal skills, project management and multitasking skills to manage multiple matters, set own work priorities and meet required work deadlines.
• Exercises foundational understanding of rules, procedures and institutions for interpreting and enforcing laws in their area of expertise, and preferably with respect to the pharmaceutical industry.
• Foundational problem solving skills required to identify and analyze routine issues in order to develop and propose solutions.
• Proficient in Microsoft Word, Excel, and PowerPoint applications. Ability to learn new systems as needed.
• Prefer experience with both US and Foreign patent experience.
• Experience with United States, Patent Cooperation Treaty, and foreign application processes, rules, regulations, and filing systems is required.
• Intermediate to advanced knowledge of Microsoft Office Suite, Adobe Acrobat, Visio.
• Intermediate to advanced knowledge of document management systems, such as iManage / First to File.
• Intermediate to advanced knowledge of patent docketing systems, such as IPManager.
• Operates independently with minimal supervision.
• This role is a hybrid opportunity requiring three (3) days onsite in our Waltham, MA offices.