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Intellectual Property Annuities Paralegal

Posted Jan 18
Full Time
On Site
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About AbbVie

AbbVie's mission is to discover and deliver innovative medicines and solutions that solve serious health issues today and address the medical challenges of tomorrow. We strive to have a remarkable impact on people's lives across several key therapeutic areas – immunology, oncology, neuroscience, and eye care – and products and services in our Allergan Aesthetics portfolio. For more information about AbbVie, please visit us at Follow @abbvie on TwitterFacebookInstagramYouTube and LinkedIn.



The Intellectual Property (IP) Annuities Paralegal is responsible for monitoring and administering annuity payment services for AbbVie’s IP portfolio. This includes facilitating the internal quarterly annuity workflow, providing payment instructions to our annuity vendor, 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.
  • Monitor and process annuity related emails in the global annuity mailbox.
  • Maintain an accurate annuities docket.
  • Extract query results from the IP database to provide quarterly preliminary and final annuity extracts to annuity vendor.
  • Direct annuity payments according to pay schedule, track payment decisions, and update tax status for all patent prosecution matters.
  • Execute ad hoc payment and stop payment requests.
  • Investigate and resolve annuity payment discrepancies with attorneys, outside counsel, agents, and payment vendor. Update docket database upon discrepancy resolution.
  • 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 because of company-wide portfolio reviews. Includes reviewing decision, reviewing 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.
  • File documents in the electronic file.
  • Monitor and maintain U.S. Patent Office Deposit Account(s) to ensure sufficient funds remain on deposit to cover all transactions requiring fee payments. Maintain and update authorized users of the USPTO Deposit account and Customer Numbers.
  • Provide back-up coverage as needed to IP Operations docket team.
  • Support patent portfolio assessments (intakes) related to mergers, asset acquisitions, divestitures, and collaborations.
  • Revise and maintain annuities Standard Operating Procedures (SOP) manual in accordance with best practice, compliance with AbbVie policies and country law.
  • Prefer Associates Degree. H.S. diploma required. Paralegal Certificate and Bachelor's degree preferred.
  • 2-5+ 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.
  • 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. 
  • Intermediate to advanced knowledge of Microsoft Office Suite, Adobe Acrobat, Visio.
  • Intermediate knowledge of document management systems, such as iManage, Thomson IP Manager/Clarivate IP Management system a plus
  • Intermediate to advanced knowledge of patent docketing systems, such as IPManager.

AbbVie is committed to operating with integrity, driving innovation, transforming lives, serving our community, and embracing diversity and inclusion. It is AbbVie’s policy to employ qualified persons of the greatest ability without discrimination against any employee or applicant for employment because of race, color, religion, national origin, age, sex (including pregnancy), physical or mental disability, medical condition, genetic information, gender identity or expression, sexual orientation, marital status, status as a protected veteran, or any other legally protected group status.

Significant Work Activities: Continuous sitting for prolonged periods (more than 2 consecutive hours in an 8 hour day)

Travel: No

Job Type: Experienced

Schedule: Full-time