Patent & Licensing Paralegal

Location
Bethesda, MD, US
Posted
Feb 19, 2021
Ref
2021-9848
Hotbed
BioCapital
Required Education
Masters Degree/MBA
Position Type
Full time
Overview

Medical Science & Computing (MSC), is searching for a Patent and Licensing Paralegal to provide support to the National Institutes of Health (NIH). This opportunity is a full-time position with MSC and it is on-site in Bethesda, Maryland.

Duties & Responsibilities

  • Manage all aspects of license agreement related work in support of the office Technology Transfer and Patent Specialist (TTPS), including license application review, database entries, licensing-related documentation review, maintenance and retention, licensing workflow navigation, etc.
  • Review, analyze and maintain licensing agreements and forecast future royalty income for the Institute; create executive summaries of license agreements; communicate with licensees on under the direction of TTPS.
  • Research and analyze changing foreign patent policy that has implications for affecting patent protection for the Institute and CDC inventions.
  • Identify and formulate foreign patent filing recommendations affecting Institute decisions related to patent applications and patents for the Institute and CDC inventions.
  • Analyze the patent expense budget and project foreseeable costs associated with pursuing domestic and/or foreign patent protection for the Institute and CDC inventions.
  • Docket Office Actions from the USPTO and Patent Offices worldwide and responses filed by law firms for patent prosecution matters; discern actionable items for Office staff.
  • Maintain and enter data into databases (including primary responsibility for maintaining the integrity of data entered therein) including patent, license, employee invention report (EIR) and agreement data (Confidentiality Disclosure Agreements (CDAs), Material Transfer Agreements (MTAs), Conditional Gift Fund Agreements (CGFs), Cooperative Research and Development Agreements (CRADAs), etc.), and patent legal services contract administration-related data.
  • Generate docket reports and help assure that upcoming deadlines are communicated within the office.
  • Make recommendations to the Office Director and other staff members to develop an acceptable plan for technical and administrative matters, including identification of work to be done, the scope to the project, and deadlines for completion, and proceeding independently.
  • Coordinate with Office staff on assignments with broadly defined goals or mission to be accomplished and make specific directives as required.
  • Manage administration of MTAs to provide more efficient timely transfer of materials for Institute scientists.
  • Act as liaison between technology transfer specialist and external organizations inquiring about establishing MTAs as well as helping NIAID inventors prepare PHS employee invention reports (EIRs).
  • Act as primary point of contact for reviewers and TTIPO specialists related to the NIAID Technical Advisory Evaluation Committee (TEAC).
  • Assist with preparation for and during TEAC and pre-TEAC meetings, and with post- TEAC proceedings.
  • Assist with advertising and marketing efforts; prepare and submit materials for publications in Federal Register, Federal Business Opportunities and other publications.
  • Assist in the administration of technology transfer agreements, including the preparation of reminder letters for payments under Cooperative Research and Development Agreements (CRADAs).
  • Originate, review and draft cover letters and memos, and various other documents.
  • Provide accurate verbal and written responses to inquiries regarding the status of technology transfer agreements.
  • Coordinate with staff members to complete special projects including preparation of educational and marketing materials


Requirements

  • Bachelor's or Master's in Paralegal Studies or a related discipline.
  • Minimum of three (3) years of patent paralegal experience in a law firm required.
  • Familiarity with USPTO and foreign patent prosecution documents and procedures.
  • Ability to navigate legal and business internet search engines.
  • Excellent organizational skills and attention to detail.
  • Excellent oral and written communication skills.
  • Ability to multi-task, including tracking and follow-up of outstanding projects.
  • Experience with Microsoft Office Suite (MS Word, Excel, Outlook).


#LI-DW1

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Company Description

We are a trusted government partner that blends deep domain expertise with advanced technologies to help our customers solve complex problems that improve, protect, and save lives. As a rapidly growing company, we combine entrepreneurial spirit, customer focus, and an outcomes-based approach to support agency missions in health IT, life sciences, public safety, and grants management.

The Dovel Family of Companies offers employees an opportunity to advance beyond a specific role or contract, we offer a path to develop an enriching career. We believe in empowering a culture of innovation, customer success, and employee growth.

What you'll get...
  • Time Off! Flexible schedules and company paid holidays allow you to take the time you need.
  • Investment in YOU! 401(K) company contributions are yours to keep with no waiting period.
  • Choices! Unique healthcare plans to choose from with options like fertility and orthodontia benefits.
  • Discovery! With our tuition assistance and training programs, we support your career advancement.
  • Tax Savings! Enroll in pre-tax Health or Dependent Care Flexible Spending, HSA with company contributions, parking, and/or transit commuter benefits.
  • Support! Working parents and busy professionals - we've got you covered with a supportive culture, confidential Employee Assistance Program, and membership to Care.com.
  • Perks! Employee discounts, peer recognition programs, company-wide wellness challenges, and fun community events.
  • A Voice! A unique culture where you can influence decisions and have your voice heard.


We are an Equal Opportunity Employer with a commitment to diversity. All individuals, regardless of personal characteristics, are encouraged to apply. All qualified applicants will receive consideration for employment without regard to race, color, religion, gender, sexual orientation, gender identity, disability, or veteran status.