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Sr IP Paralegal

Date: Nov 17, 2021

Location: Columbia, MD, US, 21044

Company: W. R. Grace & Co.

Requisition ID: 19639 

Built on talent, technology, and trust, Grace is a leading global supplier of catalysts and engineered materials. The company’s two industry-leading business segments—Catalysts Technologies and Materials Technologies—provide innovative products, technologies, and services that enhance the products and processes of our customers around the world. Grace employs approximately 4,300 people in over 30 countries.

Job Description

W.R. Grace (“Grace”) is looking for a seasoned IP paralegal to primarily support Grace’s Refining Technologies (“RT”) business segment in conjunction with the Vice President and Chief IP Counsel for Grace, with a reporting line to our Supervisory IP Paralegal. The ideal candidate will have proven ability to independently shoulder the following responsibilities.

Job Responsibilities

  • Manage patent prosecution dockets including tracking docket dates to insure outside counsel is timely meeting docket due dates.
  • Maintain files for matters handled by outside and in-house counsel.
  • Assist in 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 PAIR, and the like.
  • Serve as liaison between Outside Counsel and Grace Technical/ Business Personnel. 
  • 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 Refining Technologies 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.
  • Routinely address trademark related questions in conjunction with outside counsel.

Required Skills

  • Database, Web/Search, and Computer Skills (e.g., www.uspto.gov, PAIR)
  • Microsoft® Outlook, Word, Excel, and PowerPoint, as well as Adobe Acrobat (PowerPoint experience with SharePoint will be a plus),
  • Outlook and Teams
  • Experience with CPI is a plus
  • Close attention to detail
  • Independent and collaborative work ethic
  • Excellent organizational skills
  • Strong verbal and written communication skills
  • Proactive
  • Takes initiative in seeing tasks to completion
  • Flexibility when handling multiple projects required
  • Approachable and positive attitude

Required Experience

  • Bachelor’s degree OR Paralegal certificate
  • 5+ years of experience as a patent paralegal at a law firm or in-house legal department

Preferred Qualifications

  • Experience with trademarks
  • Expereince with patent prosecution

#WRGRACE

Grace is not accepting unsolicited assistance from search firms for this employment opportunity. Please, no phone calls or emails. All resumes submitted by search firms to any employee at Grace via email, the Internet or in any form and/or method without a valid written search agreement in place for this position will be deemed the sole property of Grace. No fee will be paid in the event the candidate is hired by Grace as a result of the referral or through other means.


Nearest Major Market: Baltimore