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Ip Paralegal Iii

4 months ago


Cambridge, United States Bristol-Myers Squibb Full time

**Working with Us**
Challenging. Meaningful. Life-changing. Those aren't words that are usually associated with a job. But working at Bristol Myers Squibb is anything but usual. Here, uniquely interesting work happens every day, in every department. From optimizing a production line to the latest breakthroughs in cell therapy, this is work that transforms the lives of patients, and the careers of those who do it. You'll get the chance to grow and thrive through opportunities uncommon in scale and scope, alongside high-achieving teams rich in diversity. Take your career farther than you thought possible.

Paralegal Responsibilities
- Advanced knowledge of US and foreign patent procedures M
- Monitors progress of patent cases and patent attorney/agent dockets through use of USPTO Private PAIR, IP Management Software and Document Management System and seeks to reconcile any noted discrepancies.
- Reviews correspondence received from U.S. outside counsel law firms and expertly liaises with agents to ensure they are in compliance with BMS processes and procedures and USPTO rules and provides them with instructions and guidance in order to meet compliance.
- Knowledge and expertise to customize/suggest language changes on forms as applicable to specific patent prosecution need.
- Identifies patent legal issues and/or problems based on knowledge of PTO procedures and suggests and/or takes initiative to resolve.
- Advanced skills to independently draft and assist with attorney responses to worldwide foreign patent agents.
- Proficiently performs Patent Term Adjustment review and analysis and delivery of analysis summary to patent attorney/agent and independently drafts petitions for PTA reconsideration.
- Participates in best practice group meetings in order to provide input and feedback to promote consistent administrative procedures.
- Liaises with docketing group by providing guidance on USPTO prosecution as it pertains to deadlines and workflows that impact the paralegal group.
- Advanced oral, writing, and communication skills including procedural document writing skills.
- Excellent organizational and accountability skills, takes initiative to follow up with inventors, counsel and agents to meet critical deadline dates.
- Sets own standards of high performance and works to exceed standards; takes initiative to expand own knowledge of PTO rules.
- Assists with onboarding and mentoring legal assistants and paralegals and provides backup support when needed. Frequently provides backup and support to legal assistants and paralegals. Demonstrated track record and valued resource to management.

General
- Expert knowledge of Microsoft Office 2013 including Outlook, Word, Excel
- Advanced knowledge of IP Management Software and Document Management Software
- Advanced form editing capability in Adobe Acrobat Pro
- Advanced proficiency in use of basic to advanced forms including IP Management Software generated forms.
- Strong skills and experience with Patent-In software to generate sequence listings.
- Proficient knowledge and use of domestic and foreign patent databases, e.g., PCT Scope; EPO Online, etc.
- Advanced reference management proficiency including searching, procurement of patent references (U.S. and Foreign patents, journal articles) and familiarity with reference linking within IP management software or document management system.
- Advanced edit capability in Chemdraw.
- Ability to quickly learn and adapt to new software, processes, and workflows in order to perform efficiently and provide key feedback to assist team members to maximize efficiency.
- Timely and efficient communicator with patent attorneys/agents, outside counsel firms, team members, cross-functional groups and stakeholders

Administrative
- Process and reconcile expense reports.
- Experienced and organized travel arranger
- Organizes small and large group meetings for attorneys/agents including meeting agenda and meeting minutes preparation.
- Consistently seeks out opportunities to provide support when there are gaps in coverage.

Qualifications:

- Bachelor's Degree or equivalent experience which is defined as 4 years of legal work experience above the minimum work experience required for the role. 10+ years of work experience or Paralegal Certificate and 8+ years of work experience in a law firm, an in-house legal department, a consulting firm, or comparable experience elsewhere.

**Uniquely Interesting Work, Life-changing Careers**

**On-site Protocol**

BMS has a diverse occupancy structure that determines where an employee is required to conduct their work. This structure includes site-essential, site-by-design, field-based and remote-by-design jobs. The occupancy type that you are assigned is determined by the nature and responsibilities of your role:
Site-essential roles require 100% of shifts onsite at your assigned facility. Site-by-design roles may be eligible for a hybrid work model with at least 50% onsite at your assigned