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Job Details

Senior Intellectual Property Paralegal

Experience
3-5 yrs required

Location
Philadelphia, PA, United States

Posted on
Sep 14, 2020

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Senior Intellectual Property Paralegal
The candidate will be responsible for managing the University's intellectual property portfolio by coordinating between inventors, PCI's business development team, outside counsel, and licensees. The position will be responsible for assisting with management of patent prosecution workflow, compliance, and data integrity. Responsible for maintaining comprehensive records of upcoming actions and deadlines in the PCI database, docketing incoming patent correspondence, compiling detailed information about upcoming actions, creating reports on IP prosecution status, obtaining cost estimates and approvals of legal work, and interacting directly with inventors to obtain feedback and signatures on patent-related documents and other information. They will be responsible for managing deadlines, and ensuring that important information is being correctly communicated and recorded in the PCI database. They will also be expected to maintain relationships with outside counsel and licensees, serving as a point of contact for questions, prepare for and attend docket review meetings, monitor budget approvals, and review counsel invoices for discrepancies. Will support compliance efforts to ensure federal regulations, including the Bayh-Dole Act are being met. They will also support data integrity of the PCI database by performing routine audits. Will also assist with initiation, negotiation, and execution of agreements including inter-institutional agreements, participation agreements, client billing agreements, confidential disclosure agreements, and return of invention assignments. Bachelor's Degree plus 3-5 years managing patent prosecution or equivalent experience required. Experience managing patent prosecution working as a paralegal, intellectual property manager, or other equivalent position preferred. Working knowledge of patent prosecution deadlines, forms, processes, and terminology preferred. Understanding of university technology transfer, legal documents and/or intellectual property preferred. Excellent computer skills including experience with databases, previous work with Inteum database is ideal. Attention to detail with clear understanding of how to prioritize workload and manage multi-task projects appropriately preferred. Excellent customer service including strong interpersonal, verbal and written communications and analytical skills preferred.

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