IP Paralegal I

Bristol Myers Squibb • Princeton, NJ

13d

About The Position

Working with Us Challenging. Meaningful. Life-changing. Those aren’t words that are usually associated with a job. But working at Bristol Myers Squibb is anything but usual. Here, uniquely interesting work happens every day, in every department. From optimizing a production line to the latest breakthroughs in cell therapy, this is work that transforms the lives of patients, and the careers of those who do it. You’ll get the chance to grow and thrive through opportunities uncommon in scale and scope, alongside high-achieving teams. Take your career farther than you thought possible. Bristol Myers Squibb recognizes the importance of balance and flexibility in our work environment. We offer a wide variety of competitive benefits, services and programs that provide our employees with the resources to pursue their goals, both at work and in their personal lives. Read more: careers.bms.com/working-with-us . PARALEGAL RESPONSIBILITIES K nowledge of US and foreign patent procedures . M onit ors progress of patent cases and patent attorney/agent dockets through use of USPTO Patent Center , IP Management Software and Document Management System . Prioritizes current workload efficiently building on the ability to handle multiple heavy dockets and learning best practices to manage multiple tasks including managing outside counsel e-mail review. Reviews patent application files to check for compliance with USPTO requirements and BMS department standards. K nowledge and working experience of the USPTO Patent Center filing system in order to independently draft and prepare simple to moderately complex patent legal documents for submission to the USPTO including (but not limited to) patent applications, figures, sequence listings (ST.26) , amendments, information disclosure statements (track IDS families and references, obtain references, prepare and file IDS 1449 form/SB08a forms) , office action responses, requests for continued examination, notices of appeal, reply briefs, allowance checklists, allowed claims, issue fee payments, etc. Complete notice of allowance checklist, and prepare and file issue fee transmittals, review and proof issued patents, as applicable, prepare and files certificates of correction, review, and proof certificates of correction. Prepare, send, and track formal documents to inventors/clients for signature. Review and file/record with the USPTO. Provide assistance to attorney s with correspondence s to worldwide foreign patent agents . Familiarity with the Code of Federal Regulations (Title 37) and the Manual of Patent Examining Procedure (MPEP) , to enable ability to identify legal issues/problems based on knowledge of PTO procedures . Desired but not mandatory. Basic knowledge of Patent Term Adjustment . Desired but not mandator y with t raining available. Excellent organizational and accountability skills, takes initiative to follow up with inventors, outside counsel law firms and agents t o meet critical deadline dates. Sets own standards of performance and works to meet standards; takes initiative to expand own knowledge of PTO rules. Assist the team with daily workflow tasks and projects in a high volume, fast paced practice while timely identifying and prioritizing time sensitive matters. GENERAL: Knowledge of Microsoft Office 365 including Outlook, Word, Excel, PowerPoint, OneNote, SharePoint, MS Teams K nowledge of IP Management Software and Document Management Software F orm editing capability in Adobe Acrobat Pro Familiarity use in templates and Word Doc forms. IP Management Software generated forms , preferable . Basic skills and experience with Patent-In software to generate sequence listings. Desired but not mandatory with training available. Preferred knowledge of domestic and foreign patent databases, e.g. , PCT Patent Scope; ePCT . Ability to search and procure patent references including U.S. and Foreign pate nts and journal articles. Basic docketing experience with preferred exposure with an IP Management software application. E dit capability in Chemdraw . Desired but not mandatory with training available. Proactively manage casework and assignments, ensuring all deadlines are met in a timely manner . Communicate docket updates to Docketing Department. ADMINISTRATIVE: Process and reconcile expense reports. Travel Arrangement O rganizes meetings for attorneys /agents including meeting agenda and meeting minutes preparation. Seeks out opportunities to provide support to others (e.g., counsel, agents, and assistants).

Requirements

• Knowledge of US and foreign patent procedures
• Knowledge and working experience of the USPTO Patent Center filing system
• Familiarity with the Code of Federal Regulations (Title 37) and the Manual of Patent Examining Procedure (MPEP)
• Excellent organizational and accountability skills, takes initiative to follow up with inventors, outside counsel law firms and agents t o meet critical deadline dates
• Sets own standards of performance and works to meet standards; takes initiative to expand own knowledge of PTO rules
• Knowledge of Microsoft Office 365 including Outlook, Word, Excel, PowerPoint, OneNote, SharePoint, MS Teams
• Knowledge of IP Management Software and Document Management Software
• Form editing capability in Adobe Acrobat Pro
• Familiarity use in templates and Word Doc forms
• Basic docketing experience with preferred exposure with an IP Management software application

Nice To Haves

• Basic knowledge of Patent Term Adjustment
• Basic skills and experience with Patent-In software to generate sequence listings
• Preferred knowledge of domestic and foreign patent databases, e.g. , PCT Patent Scope; ePCT
• Ability to search and procure patent references including U.S. and Foreign pate nts and journal articles
• Edit capability in Chemdraw
• Bachelor’s degree , or 6+ years of work experience or Paralegal Certificate and 4+ years of work experience in a law firm, an in-house legal department, a consulting firm, or comparable experience elsewhere
• Ability to handle multiple projects with changing priorities while working independently
• Ability to work within a team environment
• Strong attention to detail, ability to prioritize tasks, and excellent time management skills to meet deadlines
• Adaptability and openness to learning, embracing changes in procedures and new technologies

Responsibilities

• Monitors progress of patent cases and patent attorney/agent dockets through use of USPTO Patent Center , IP Management Software and Document Management System
• Prioritizes current workload efficiently building on the ability to handle multiple heavy dockets and learning best practices to manage multiple tasks including managing outside counsel e-mail review
• Reviews patent application files to check for compliance with USPTO requirements and BMS department standards
• Independently draft and prepare simple to moderately complex patent legal documents for submission to the USPTO including (but not limited to) patent applications, figures, sequence listings (ST.26) , amendments, information disclosure statements (track IDS families and references, obtain references, prepare and file IDS 1449 form/SB08a forms) , office action responses, requests for continued examination, notices of appeal, reply briefs, allowance checklists, allowed claims, issue fee payments, etc
• Complete notice of allowance checklist, and prepare and file issue fee transmittals, review and proof issued patents, as applicable, prepare and files certificates of correction, review, and proof certificates of correction
• Prepare, send, and track formal documents to inventors/clients for signature
• Review and file/record with the USPTO
• Provide assistance to attorney s with correspondence s to worldwide foreign patent agents
• Assist the team with daily workflow tasks and projects in a high volume, fast paced practice while timely identifying and prioritizing time sensitive matters
• Proactively manage casework and assignments, ensuring all deadlines are met in a timely manner
• Communicate docket updates to Docketing Department
• Process and reconcile expense reports
• Travel Arrangement
• Organizes meetings for attorneys /agents including meeting agenda and meeting minutes preparation
• Seeks out opportunities to provide support to others (e.g., counsel, agents, and assistants)

Benefits

• Medical, pharmacy, dental and vision care
• Wellbeing support such as the BMS Living Life Better program and employee assistance programs (EAP)
• Financial well-being resources and a 401(K)
• Financial protection benefits such as short- and long-term disability, life insurance, supplemental health insurance, business travel protection and survivor support
• Work-life programs include paid national holidays and optional holidays, Global Shutdown Days between Christmas and New Year’s holiday, up to 120 hours of paid vacation, up to two (2) paid days to volunteer, sick time off, and summer hours flexibility
• Parental, caregiver, bereavement, and military leave
• Family care services such as adoption and surrogacy reimbursement, fertility/infertility benefits, support for traveling mothers, and child, elder and pet care resources
• Other perks like tuition reimbursement and a recognition program

What This Job Offers

• Job Type: Full-time
• Career Level: Entry Level
• Number of Employees: 5,001-10,000 employees