IP Annuities Paralegal

Lake County, IL, US
Sep 13, 2018
Required Education
Associate Degree
Position Type
Full time
The IP Annuities Paralegal will manage the timely and accurate payment of annuities and maintenance fees for AbbVie's IP portfolio. The IP Annuities Paralegal will be responsible for facilitating the quarterly annuity process, providing back-up docketing support and completing ad hoc project work.

Major Duties and Responsibilities

  • Manage Global Annuity Workflow process to ensure timely payment of patent annuities company-wide.
  • Extract query results from the docket database to provide quarterly preliminary and final annuity extracts to annuity vendor.
  • Track payment decisions and update tax status for all patent prosecution matters as related to annuity payment. Perform tax drop procedure for matters with a drop decision by notifying the agent and outside counsel.
  • Investigate and resolve annuity discrepancies from annuity vender: Research and resolve payment discrepancies with agents, associates and payment service. Update docket database upon discrepancy resolution.
  • Investigate and resolve discrepancies related to case particulars or database anomalies. Discrepancy resolution includes file review with attorneys, outside counsel, and researching public and private data resources. Update docket database upon discrepancy resolution.
  • Direct annuity payments according to pay schedule and execute ad hoc payment requests. Interface with attorneys, paralegals, agents, and outside counsel as needed.
  • Compile query results from the database to provide annuity payment reports for budgeting, forecasts and cost savings as requested by management to facilitate portfolio decisions.
  • Communicate and coordinate the centralized process of dropping patent cases as a result of company-wide portfolio reviews. Includes reviewing decision, database patent records for tax payment status, stopping payments where applicable, communicating abandonment to Outside Counsel/Foreign Agents, and updating patent database record with changes.
  • Monitor and maintain U.S. Patent Office Deposit Account to insure sufficient funds remain on deposit to cover all transactions requiring fee payments. Maintain list of department members authorized to use the USPTO Deposit Account.
  • Provide back-up coverage as needed to IP Operations docket team.
  • Support patent portfolio assessments related to mergers, asset acquisitions and divestitures.
  • Revise and maintain annuities Standard Operating Procedures (SOP) manual in accordance with best practice, compliance with AbbVie policies and country law.

  • Bachelor's Degree in business management, paralegal studies or equivalent work experience.
  • Five years minimum experience in patent administration.
  • Comprehensive knowledge of patent filing and prosecution rules/regulations. Fluent with patent docketing and annuities processes and systems.
  • Ability to manage multiple tasks and projects with rapidly changing priorities to meet mission critical deadlines.
  • Outstanding organizational skills, strong attention to detail and proficiency with a variety of software applications.
  • Experience docketing in Thomson IP Manager/Clarivate IP Management system is a plus.

Equal Opportunity Employer Minorities/Women/Veterans/Disabled