Docket Paralegal

The Opportunity

This position works onsite out of our headquarters at Abbott Park, Illinois in the Legal Division.

The IP Docketing Specialist will be responsible for daily patent operations responsibilities with a focus on docketing and auditing of a worldwide patent estate, in addition to assigned independent project work. The ideal candidate is skilled in all IP Operational areas, including disclosure and patent docketing, auditing, foreign filing, annuities, portfolio review, and electronic record management.

What You’ll Work On

Daily processing of incoming and outgoing correspondence with outside counsel, the U.S. Patent & Trademark Office, foreign patent offices, authorities (IB) and annuity service vendor (electronic/paper). Implementing, maintaining, and managing the patent management system, as well as preparing patent docket reports and IP portfolio reports. Ensuring that all docket dates have been cleared daily and that all patent related deadlines are met. Monitoring status of patents and patent applications. Managing the integration of acquired properties and transfer of divested properties Identifying and independently resolving discrepancies in records, while under time pressure. Heavy interaction with client (internal and external) to reply to inquiries and obtain needed information Staying abreast of changes in patent rules. Developing, implementing, and maintaining Best in Class docketing processes, procedures, and policies for invention disclosures, patents, and patent applications, including daily/periodic workflows, in close collaboration with Legal’s Patent and IP teams.

Required Qualifications

Must have at least 3-5 years experience in domestic and foreign patent prosecution.  Must have extensive knowledge and understanding of patent terminology and filing procedures including both US and foreign matters and knowledge and understanding of current USPTO rules and procedures. Experience with worldwide maintenance fee renewals a plus. Must be highly accurate under pressure, and able to manage multiple priorities under deadlines. Must have demonstrated ability to maintain strict confidentiality of client’s IP affairs. Must be able to work independently and manage a variety of tasks and assist the larger Legal team. Must have strong verbal and written communication skills, and be able to communicate effectively with personnel on all levels. Must have working knowledge of docketing software, preferably The IP Management System software (Clarivate/CPA/MDC). Must have strong PC skills in word processing, spreadsheets, e-mail, and scanning. Paralegal Certificate Required

Preferred Qualifications

Prefer 5-7 years of experience in IP operations areas such as docketing, prosecution, file management, and related IP matters. Experience with worldwide maintenance fee renewals a plus. Associate/Bachelor’s Degree preferred.

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