IP Paralegal

Job Description

W.R. Grace (“Grace”) is looking for a seasoned IP Paralegal reporting to the VP and Chief IP Counsel for Grace. The ideal candidate will have proven ability to independently shoulder the following responsibilities.

Responsibilities

• Manage patent and trademark prosecution dockets including tracking docket dates to ensure in-house and outside counsel are timely meeting docket due dates.
• Maintain files for matters handled by outside and in-house counsel.
• Assist with IP portfolio management, including updating portfolio status reports
• Manage and resolve routine matters that do not require direct in-house attorney assistance or instruction.
• Provide guidance on patent maintenance decisions, requests for examinations, information disclosure statements, use of USPTO Patent Center, and the like.
• Serve as liaison between Outside Counsel and Grace Technical/ Business Personnel.
• Onboard new law firm vendors and manage the administration of law firm billing through Legal Tracker billing software.
• Communicate with law firms to resolve billing issues.
• Generate and analyze legal spending reports and assist with optimizing the use of Legal Tracker within the Grace Legal Department.
• Manage correspondence and prepare declarations, powers of attorney, agreements, foreign filing instructions, and the like for execution of Grace’s technical and business personnel.
• Communicate between patent attorneys, business segment managers and inventors, such as memoranda concerning filing confirmation, IDS submissions, office actions, allowances, and the like.
• Support agreement work (including confidentiality, research, testing, and joint development agreements) generated for the SC business segment.
• Support IP Department with other activities such as prior art searching/acquisition activities (due diligence).
• Obtain file histories, document translations, non-patent prior art, and overflow IP docket (patent and trademark) and IP agreement work from other paralegals in department.
• Address routine trademark related questions in conjunction with outside counsel.

Required Qualifications

• Bachelor’s degree OR Paralegal certificate
• 5+ years of experience as a patent paralegal at a law firm or in-house legal department
• Excellent organizational skills
• Strong verbal and written communication skills
• Independent and collaborative work ethic
• Close attention to detail
• Proactive
• Takes initiative in seeing tasks to completion
• Flexibility when handling multiple projects
• Approachable and positive attitude
• Database, Web/Search, and Computer Skills (e.g., www.uspto.gov, Patent Center)
• Microsoft® Outlook, Word, Excel, and PowerPoint, as well as Adobe Acrobat (PowerPoint experience with SharePoint will be a plus)
• Outlook and Teams

Preferred Qualifications

• Experience with Legal Tracker billing software, though Grace will provide training if needed.
• Experience supporting trademark filing.
• Experience supporting patent filing and prosecution.
• Working knowledge with CPI
• #LI-RR1 

Benefits

• Medical, Dental, Vision Insurance
• Life Insurance and Disability
• Grace Wellness Program
• Flexible Workplace
• Retirement Plans
• 401(k) Company Match
• Paid Vacation and Holidays
• Parental Leave
• Tuition Reimbursement
• Company Donation Match Program