Patent Paralegal

Worcester, MA, US
Aug 26, 2018
Required Education
Associate Degree
Position Type
Full time
AbbVie Bioresearch Center in Worcester, MA is looking for a Patent Paralegal to join their team to provides patent prosecution support to a group of intellectual property attorneys. The Patent Prosecution Paralegal is extremely proficient in preparing patent filing and prosecution documents, electronic filing at both the USPTO and PCT Receiving Offices, monitoring docket deadlines and taking the initiative to ensure all deadlines are met. The Patent Prosecution Paralegal must adapt to shifting priorities and short timelines. Strict attention to detail and deadlines is critical.

Key Responsibilities Include:

  • Prepares and files all legal documents and correspondence associated with patent application preparation, filing and prosecution for submission to USPTO, foreign patent offices and outside counsel. Ensures that documents are complete, accurate and organized. Prepares Information Disclosure Statements (IDS) for filing with the USPTO, including assembling references and preparing forms.
  • Process incoming patent office documents and correspondence from foreign counsel, prepare responses for attorney review and transmit to foreign associates and/or outside counsel. Obtains certified translations and priority documents.
  • Prepares and attends to legalization of assignments and power of attorney documents; ensures formality requirements are met for each patent case. Prepares report letters to inventors and stakeholders and prepares form letters for attorney signature.
  • Arranges and conducts meetings with scientists, inventors and other business colleagues to obtain the required information, signatures and approval of IP documentation.
  • Manages docket deadlines for multiple attorneys, is well-organized, anticipates conflicts and plans ahead. Confirms accuracy of computer docket system and case files.
  • Retrieves documents from Lexis, USPTO PAIR System, WIPO and EPO website.
  • Collaborates with colleagues to problem solve, locate information, find answers and is solution-oriented.
  • Coordinates and maintains departmental files (both paper and electronic), as assigned, in compliance with corporate and government regulations.
  • Administrative functions with the Patent and Trademark Department Including: attorney calendar management, scheduling travel, managing correspondence and scheduling couriers, processing expense reports, meeting/event planning, preparing presentations from source materials, handling teleconference and video conference set-up, and registering department members for external meetings.
  • Uses and understands Microsoft Office Suite and other business-specific software, including the Corporate Travel Web site, and employee performance management systems (as applicable).

  • Prefer Associates Degree. H.S. diploma required. Paralegal Certificate preferred.
  • 2+ year's previous experience as a patent paralegal including experience with both US and Foreign patent experience.
  • Operates with general instruction and limited supervision.
  • Experience with the USPTO EFS is required.
  • Intermediate to advanced knowledge of Microsoft Office Suite, Adobe Acrobat, Visio.
  • Intermediate knowledge of document management systems, such as iManage.
  • Intermediate to advanced knowledge of patent docketing systems, such as IPManager.

Equal Opportunity Employer Minorities/Women/Veterans/Disabled