IP Paralegal

BeOne Medicines • San Mateo, CA • 4h ago

General Description:

We are seeking an IP Paralegal to join our growing in-house Intellectual Property team to support patent prosecution in the US and in foreign jurisdictions. Responsibilities include IDS management, preparation of Section 18 responses, recordation of assignments, coordinating with outside counsel, and e-billing support. Intellectual property and process management related experience in a law firm and/or in-house with a pharmaceutical or biotechnology company is preferred. This is a remote position.

Responsibilities:

Prepare IDS Packages

Manage information disclosure requirements using web-based IDS software.

Monitor incoming Office Actions for newly cited references and update IDS database records with same.

Maintain library of cited references; locate and/or purchase copies of references as needed.

Prepare machine translations of foreign language NPL documents.

Monitor weekly report of IDS deadlines and coordinate with in-house attorneys to ensure timely filing of information disclosure statements.

Generate IDS packages using web-based software, complete IDS checklist, coordinate with responsible in-house attorney to finalize and send to outside counsel for filing with USPTO.

Prepare Section 18 Responses

Manage Section 18 requirements for pending Israeli patent applications using web-based IDS software. Prepare lists of counterpart applications, office actions and examinations reports issued in foreign counterparts, and references cited therein. Compile copies of same.

Coordinate with in-house attorneys and outside counsel to finalize and file submission with ILPTO.

Record Assignments with USPTO

Monitor weekly report of assignment recordation deadlines.

Review executed assignments and internal records for accuracy and completion, and to confirm chain of title is complete.

Record executed assignments for US and PCT applications via USPTO EPAS.

Forward notices of recordation to outside counsel.

Ensure internal records are updated accordingly (e.g. close related deadlines, update records with reel/frame number, etc.).

Provide e-Billing Support

Complete preliminary review of outside counsel invoices in SimpleLegal.

Coordinate with vendors, outside counsel, in-house attorneys, third parties, and Accounts Payable to resolve e-billing issues.

Create e-billing numbers for newly created matters in SimpleLegal and provide same to outside counsel.

Support Operations Team, In-House Attorneys, and Business Partners

Work closely with other IP paralegals, corporate paralegals, in-house attorneys, and business partners to provide patent prosecution and/or operational support.

Coordinate with other IP paralegals to ensure coverage during planned and unplanned absences; provide back-up and/or assistance as needed.

Requirements

Associates Degree and 7+ years IP paralegal experience in a law firm or in-house with a biotechnology or pharmaceutical company (or Bachelors Degree and 5+ years experience)

Flexible availability to attend meetings with a global IP team.

Knowledge of SyncIDS software preferred.

All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability or protected veteran status.

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