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IP Paralegal

Posted Oct 18
Full Time
On Site
Rochester, Minnesota

Introduction
At IBM, work is more than a job – it’s a calling: To build. To design. To code. To consult. To think along with clients and sell. To make markets. To invent. To collaborate. Not just to do something better, but to attempt things you’ve never thought possible. Are you ready to lead in this new era of technology and solve some of the world’s most challenging problems? If so, lets talk.

Your Role and Responsibilities
This position is fully remote until the IBM Patent Center office at the respective location reopens. Flexible arrangements for continued remote work after that time may be considered. At this time, this role will support the IBM Patent Center in Rochester, MN.

  • Provide paralegal support and management of administrative matters as a team member with Patent Center attorneys and patent professionals within the IBM Patent Center.
  • Complete full scope of responsibilities exhibiting high personal productivity with minimal direction.
  • Effectively utilize knowledge of the IP Law environment such as the ThinkIP database and other IP Law specific internal databases. Be highly proficient in the operation and capabilities of internal automated office systems and with specialized IP Law systems.
  • Use own judgment and maintain awareness of activity within attorney’s and patent professional’s scope of operation and on own initiative, resolve problems and keep attorneys and patent professionals aware of status.
  • Act as a liaison between patent professionals, attorneys, administrative staff, and management, following up on pending items and relaying information. Included in this is the timely coordination of complex rules/regulations with internal needs and commitments.
  • Independently create and disseminate business data concerning Patent Center activity (Patent Center Filings, Budget, Personnel) to Patent Center management. Interact with colleagues for the exchange of vital information. Create business data presentations and reports for Patent Center management.
  • Independently utilize ThinkIP tools (Hyperview and FIND queries) to extract routine and non-routine data from the ThinkIP database.
  • Screen, analyze, categorize and set priorities for attorneys/patent professionals in order of urgency and importance. Monitor and ensure timely responses by attorney/patent professional to avoid abandonment of patent applications. Execute procedures to ensure official U.S. Patent Office correspondence is handled in a timely and accurate manner.
  • Assist with preparation of complex legal/technical documents such as patent applications, legal briefs, appeals, and interferences for filing in the U.S./EPO/international Patent Office(s). Prepare accompanying formal documents such as assignments, declarations, powers of attorney, and petitions. Administer preparation of drawings for patent applications and outside publications with patent illustrators.
  • Interface with IBM/non-IBM inventors to obtain current and accurate data required for filing patent application documents. Arrange for execution of patent applications and accompanying documents by inventors.
  • Create, record, and establish follow-up procedures for all necessary papers relating to the functions of their own workload, requiring formal responses by specific dates pursuant to law or regulation.
  • Develop, support, and maintain process/project workflow that drive efficiencies. Update Patent Center processes accordingly to coordinate U.S./EPO/international Patent Office and IBM internal requirements and procedures.
  • Function in an environment of changing priorities and time constraints imposed by these requirements.
  • Act as role model for department; assume leadership role, setting guidelines and establishing department procedures as necessary in accordance with new U.S./EPO/international Patent Office rules. Communicate/assist others to implement official Patent Office rulings.
  • Use of excellent communication skills for giving direction and mentoring to others in the subject matter area.
  • Provide training and guidance of new or less experienced Patent Center administrative personnel.
  • Active member and contributor to the Patent Center team, support the team on other projects where necessary, and perform other duties, as assigned.


Required Technical and Professional Expertise

  • Minimum 3+ years of relevant experience.
  • Demonstrated understanding of how to develop, implement, and enhance processes.
  • Project management skills including the ability to define the project scope, establish a timeline, manage resources, communicate status, and lead the delivery of results.
  • Demonstrated analytical skills, able to collect, organize, analyze, and disseminate significant amount of information with attention to detail and accuracy.
  • Ability to prioritize, lead and execute on numerous projects simultaneously.
  • Demonstrated ability to organize information and processes in a logical and efficient manner.
  • A high degree of emotional intelligence and ability to communicate effectively with all clients.
  • Ability to work multi-functionally and cross-culturally in a flexible, highly complex and varied work environment and handle multiple priorities.
  • Expertise with MS Office products (Word, Excel, and PowerPoint).


Preferred Technical and Professional Expertise

  • Minimum 5+ years of relevant experience including at least 3 years of work in Legal.
  • In-depth knowledge of Intellectual Property Law office practice, U.S./EPO/international Patent Office procedures, and administrative operations procedures.
  • Awareness of U.S. Patent Office communications, due dates, and responses.
  • Proficiency with IP management software and USPTO electronic filing and management web tools.
  • Experience in a leadership role.
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