Associate - Paralegal & IDS

2 weeks ago

Gurugram, India UnitedLex Full time

Job Title: Associate – Patent Paralegal & IDS Management


Overview:

The Paralegal is responsible for individual contribution as part of the UnitedLex IP Managed Services. Primary day to day focus will be on various patent-related docketing and IDS activities. Candidates should have strengths in teamwork (internal and external stakeholders), quality control, file/docket and problem-solving. They must also have strong interpersonal skills to build strong relationships with internal and external stakeholders.


Requirements:

  • 1+ years progressive work experience as a patent docketing and IDS specialist at a law firm or (preferred) in-house.
  • Should have at least 1-2 years of experience in IDS (Mandatory)
  • At least 1 year of experience using Foundation IP (preferred).
  • Knowledge and experience working with the United States Patent and Trademark Office (preferred).
  • Excellent written and verbal communication skills.
  • Ability to communicate effectively with other professionals in the legal department and business teams.
  • Detail-oriented with excellent judgment and analytical skills
  • Able to juggle multiple tasks - dynamic, and action-orientated, which meets deadlines and makes it happen.
  • Ability to work collaboratively with an onsite and/or virtual global team.
  • Proficient in Microsoft Word, Outlook, Excel and related software programs
  • Strong academic background.


Competency

  • Excellent organizational skills including record keeping, data collection, and system information. Ability to compile and furnish concise, detailed information in report format, written correspondence, email, or verbally.
  • Must have ability to build and maintain relationships and work confidently with people at all levels.
  • Must be an excellent communicator (written and verbal) with the ability to earn trust and credibility.
  • Must have ability to demonstrate a high degree of confidentiality.
  • Must be willing to accept responsibility and make decisions based on experience, education and understanding of business needs.
  • Fast learner able to grasp business needs and priorities quickly.
  • Critical thinking: able to evaluate information gathered from multiple sources and distinguish user requests from the underlying true needs.
  • Possess general working legal knowledge and specific client and company operations (preferred)
  • Excellent organizational skills, ability to manage multiple assignments at once, and meet deadlines.
  • Proficient in technology and tools used by the company and with the client.


Key Responsivity

  • Accurately draft IDS documents in compliance with governing bodies (e.g., USPTO) for patent filings
  • Tracking and managing PTO communications including, but not limited to, new applications, Office Action responses, Information Disclosure Statements, assignments, and related ownership transfers, etc., on the docketing tool.
  • Tracking, entering, and managing patent recordables on the docketing tool.
  • Reviewing documentation as instructed by Patent Attorneys
  • Using internal and external databases to obtain patent documentation.
  • Supporting annuities and recordable activities
  • Supporting the management of Power of Attorney (PoAs)
  • Initiating new client matters in the document management systems.
  • Maintaining files and documents relevant to applicable matters in the document management system.
  • Reviewing patent docket and deadlines daily.
  • Ordering documents, file histories, certified copies, etc.


Tracking and managing outside counsel/vendor communications and enter relevant information in the docketing tool on:

  1. Foreign prosecution-related tasks such as preparation and filing of PCT applications and associated non-U.S. prosecution filings.
  2. Enter the national and regional stage and associated formality requirements specific to each country.


* Please refer to our Privacy Policy at UnitedLex for information, “ ”

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