1+ months

Patent Paralegal

Santa Clara, CA
  • Jobs Rated

At Abbott, we're committed to helping people live their best possible life through the power of health. For more than 125 years, we've brought new products and technologies to the world -- in nutrition, diagnostics, medical devices and branded generic pharmaceuticals -- that create more possibilities for more people at all stages of life. Today, 99,000 of us are working to help people live not just longer, but better, in the more than 150 countries we serve.

Job Description:

  • Prepare USPTO (United States Patent and Trademark Office) filings and E File with the USPTO
  • File various patent applications including provisional, continuation, and divisional
  • Prepare and file transmittal letters, Power of Attorneys, Assignments, Information Disclosure Statements (IDS), RCEs, Terminal Disclaimers, After Final Consideration Pilot Program Request, and Declarations for US Patent applications and proofs all outgoing materials with attention to detail
  • Communicate with USPTO, attorneys, paralegals, liaisons, foreign associates and staff about patent docketing and prosecution matters
  • Manage incoming mail, track invention disclosures, establish and maintain a comprehensive file system
  • Monitor deadlines and review and oversee workflow to assure timely filings
  • Maintain docket for all US and foreign patent applications and issued patents requiring coordination with IP manager paralegals
  • Communicate with Outside Counsel directly regarding patent applications/prosecution requirements for both US and foreign matters
  • Communicate with foreign associates directly concerning patent applications/prosecution requirements per attorney instructions
  • Promote solid inventor relations; independently prepare inventor correspondence and communicate directly with inventor concerning their invention disclosures, patent applications, and issued patents; prep and pay inventor awards
  • Remain abreast of new Patent Office Rules and filing procedures, alert attorneys of new procedures and rules relating to patent practice and attend appropriated training classes
  •  Organize and maintain numerous physical and electronic files (correspondence, patent applications, invention disclosures, technical documents, discovery materials, drawings and agreements)
  • Assist with Freedom to Operate opinions
  • Work on special projects as assigned
  • Keep oversight of project to ensure it completes on time and on budget
  • Arrange appointments, coordinate meetings, reserve conference rooms, arrange for teleconferencing and equipment set-up, make travel arrangements, make lunch and dinner reservation, and submits reimbursement requests
  • Alert IP (Intellectual Property) manager Docketing Paralegal in charge of docketing whenever anything is filed with the USPTO when required
  • Interface with IP manager Docketing Paralegal to ensure that matters are accurately docketed
  • Generate reports for quarterly annuity/maintenance fee payments in a timely fashion and works with the attorneys to provide family and license information for cases to be abandoned

    Technical & Personal Skills:

    • A positive team member and active contributor in a team environment
    • Excellent organizational and problem-solving skills
    • Confidence to liaise with people globally, at all levels of the company
    • Excellent written and oral communication skills
    • Outstanding attention to detail and has the capability to focus on completing tasks and assignments under pressure with precision
    • Excellent proofreading and composition skills, including knowledge of appropriate formatting and styles for patent applications and responses
    • Able to prioritize and manage multiple tasks independently, and to adapt to changing priorities
    • A drive to learn new material
    • Flexible, adaptable and efficient work practices
    • Proficiency with Microsoft Office Suite, including MS Word, Outlook, Excel, PowerPoint, etc.
    • Experience managing calendars electronically, making travel arrangements and processing expense reports
    • Experience with electronic docketing and invoicing systems

      Education Requirements:

      • Bachelor’s degree required 
      • Paralegal certificate preferred

        Experience Requirements:

        • Minimum of FIVE (5) years of patent prosecution work experience in a law firm environment
        • Thorough knowledge of patent docketing procedures
        • Thorough knowledge of U.S. patent prosecution procedures and PTO rules and forms
          Job Family: Operations & Business Support
          Division: GENC General Counsel
          Travel: No
          Medical Surveillance: No
          Significant Work Activities: Continuous sitting for prolonged periods (more than 2 consecutive hours in an 8 hour day)


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Patent Paralegal

Santa Clara, CA

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Santa Clara, CA

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32nd2018 - Paralegal
Overall Rating: 32/220
Median Salary: $50,410

Work Environment
Very Good
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