IP Paralegal

at  Purdue Research Foundation

DESCRIPTION

Working for the Purdue Research Foundation offers a dynamic and innovative environment where you can be at the forefront of groundbreaking research and technological advancements. As a member of this organization, you’ll have the opportunity to collaborate with brilliant minds and contribute to cutting-edge projects that have the potential to shape the future in various fields. The Foundation’s commitment to driving innovation and entrepreneurship provides a stimulating and supportive workplace culture. Additionally, you’ll have access to state-of-the-art resources and a network of professionals dedicated to advancing knowledge and technology. Working for the Purdue Research Foundation means being part of a team that’s actively driving progress and making a lasting impact on the world. Are you ready to change with world with us? Apply today!
While this is a primarily remote position, presence in the the office (located in West Lafayette) may be required on occasion

Essential Functions

• 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.

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.

Benefits Summary for eligible employees:

• 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.

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.

Essential Functions

• 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