IP Paralegal

W. R. Grace & Co.•Columbia, MD

8d•$72,013 - $99,018•Hybrid

About The Position

W.R. Grace (“Grace”) is looking for a seasoned IP paralegal to primarily support Grace’s Performance Catalyst Solutions business segment to join our legal team. This role reports into the Assistant General Counsel, IP and is located in Columbia, MD. The ideal candidate will have proven ability to independently be responsible for day-to-day IP operations and administration.

Requirements

Bachelor’s degree OR Paralegal certificate
5+ years of experience as a patent paralegal or IP Specialist at a law firm or company
Database, Web/Search, and Computer Skills (e.g., www.uspto.gov, PAIR)
Detail oriented
Independent and collaborative work ethic
Excellent organizational skills
Strong verbal and written communication skills
Proactive
Takes initiative in seeing tasks to completion
Flexibility when handling multiple projects required
Approachable and positive attitude

Nice To Haves

Chemistry background with experience in conducting prior art searches.
Experience with CPI
Experience with Legal Tracker billing software, though Grace will provide training if needed
Experience supporting trademark filing
Experience supporting patent filing and prosecution

Responsibilities

Manage patent and trademark prosecution dockets including tracking docket dates to ensure in-house and outside counsel is timely meeting docket due dates.
Manage and oversee CPI in order to properly maintain files for matters handled by outside and in-house counsel.
Assist with IP portfolio management, including updating portfolio status reports
Manage and resolve routine matters that do not require direct in-house attorney assistance or instruction.
Provide guidance on patent maintenance decisions, requests for examinations, information disclosure statements, use of USPTO Patent Center, and the like.
Serve as liaison between Outside Counsel and Grace Technical/ Business Personnel.
Onboard new law firm vendors and manage the administration of law firm billing through Legal Tracker billing software.
Communicate with law firms to resolve billing issues.
Generate and analyze legal spending reports and assist with optimizing the use of Legal Tracker within the Grace Legal Department.
Manage correspondence and prepare declarations, powers of attorney, agreements, foreign filing instructions, and the like for execution of Grace’s technical and business personnel.
Communicate between patent attorneys, business segment managers and inventors, such as memoranda concerning filing confirmation, IDS submissions, office actions, allowances, and the like.
Support agreement work (including confidentiality, research, testing, and joint development agreements)
Support IP Department with other activities such as prior art searching/acquisition activities (due diligence).
Address routine trademark related questions in conjunction with outside counsel.