IP Paralegal - Purdue Research Foundation

Description

• Draft patent prosecution documents (shell amendments and responses to Office Actions) for attorney review
• Prepare USPTO forms for US and PCT patent application filing and prosecution.
• Prepare US 371 Nationalization documents.
• Electronically file applications, forms, amendments, and responses in the USPTO upon request.
• Search for and save US and foreign references and non-patent literature for use in Office Actions and Information Disclosure Statements.
• Prepare Information Disclosure Statements and download references to EFS Web for later submission upon request. 
• Draft continuation and divisional patent applications for attorney review.
• Format US and PCT applications and drawing sheets as needed.
• Investigate and resolve patent related issues in-house, with the USPTO, and with WIPO.
• Review file histories, prepare Notice of Allowance Checklists and Issue Fee Transmittals, and pay issue fees upon request.
• Assist patent managers on resolving IP issues with USPTO, Inventors, licensees and other OTC Staff.
• Work closely with OTC Operations and other OTC staff to achieve IP objectives and metrics for OTC.
• Run docket reports either manually or utilizing the docket system.
• Other duties as assigned.

Additional Responsibilities

• Act as a back-up for other paralegal staff.
• Write/create queries for specialized docket requests 
• Calculate patent terms and update expiration dates for patents upon request.
• Prepare and forward correspondence to inventors reporting status of applications upon request.
• Respond to licensee requests for complete file histories and/or copies of documents to support invoices.
• Undertake special projects as assigned from time to time.
• Keep abreast of USPTO fee changes and other critical information required for job functions.
• Support Patent Managers generally, including occasional special projects
• Serve as a knowledgeable resource for OTC staff and provide guidance, and ongoing support as needed.

Skills, Knowledge and Expertise

• Broad-based intellectual property background.
• Extensive experience with the USPTO’s online patent and trademark tools, including Private PAIR and EFS-Web.
• Excellent written and verbal communication skills.
• Exceptional organizational skills, along with the ability to complete tasks in an accurate and timely manner despite numerous conflicting priorities and deadlines.
• Ability to independently and efficiently prioritize workflow and maintain an organized task schedule.
• Strong problem-solving skills.
• Experience with Microsoft Word, Excel, Outlook, One Drive, and Teams is required.
• Prior experience with IP Docket Systems and updating a docket is a plus.

Required Education/Experience and Benefits

• Associate’s degree required.
• Bachelor’s Degree preferred.
• Paralegal Certification preferred. 
• An equivalent combination of education and experience may be considered in lieu of degree/certification.
• 1-3 years of professional experience as IP paralegal is required.
• 3-5 years of related experience preferred.

• 10 paid holidays per year.
• Accrue up to 22 vacation days a year.
• Traditional pre-tax 403(b) and Roth retirement plans available.
• 10% employer contribution to your retirement plan and immediate vesting.
• Health Savings Account- earn up to $450 annually towards medical expenses.
• Employer funded Preventative Dental and Vision insurance. 
• Tuition discounts on eligible programs at Purdue University and Purdue Global for qualified employees, spouses, and dependents.