Patent Docket Specialist

MSD•Rahway, NJ

1d•Hybrid

About The Position

The Office of General Counsel is seeking an experienced Patent Docket Specialist to provide operational support to the Intellectual Property (IP) organization. The primary responsibility is to ensure all patent prosecution activities are accurately and timely entered into the docketing system in accordance with U.S. and international patent law and procedure. This position has a flexible hybrid office schedule based in Rahway, NJ. A successful candidate should possess strong oral and written communication skills, be self-motivated and excel in a team environment. The candidate should also have a demonstrated capacity to manage and prioritize multiple tasks efficiently in a high-volume environment to timely meet all deadlines. The company is a global health care leader with a diversified portfolio of prescription medicines, vaccines and animal health products, committed to inclusion and diversity.

Requirements

High School degree or equivalent required
Minimum of three (3) years of patent docketing experience in a law firm or in-house legal department
Substantive knowledge of US and foreign patent prosecution principles, strategies, and technology
Experience working with global IP portfolios
Advanced Proficiency with docketing systems and U.S. and international Patent and Trademark Office databases including USPTO’s Private PAIR & EPAS
Advanced Proficiency in MS Office Suite (Outlook, Word, Excel)
Extraordinary accuracy and attention to detail in analysis and communications
Ability to speak and write clearly and succinctly including on complex legal issues, and ability to craft effective communications that emphasize key points and ideas
Effective time management to meet deadlines including project management skills, prioritization, consistent delivery of commitments, and ability to organize information and build upon ideas of others
Autonomy on routine tasks as well as projects of greater complexity, and ability to recognize need for and seek further direction of attorney
Discrete in handling sensitive and confidential information, and a high level of integrity
Clear motivation and focus on achieving measurable, tangible results
Strong interpersonal skills, collaborates well with others, skilled at interacting with all levels of personnel with professionalism
Resilient and change-agile, able to work in a fast-paced environment with a high volume of work
Willingness to adopt change

Nice To Haves

Associate degree, or Paralegal certificate preferred
Specific experience supporting pharmaceutical or biotechnology patent prosecution
Prior experience with Clarivate's The IP Management System (TIPMS) or IPManager and/or First-to-File

Responsibilities

Review, interpret, and monitor all incoming communications from U.S., PCT and International Patent Offices as well as internal docketing email and correspondence
Accurately create and maintain patent and disclosure case records within the docketing system
Accurately enter prosecution deadlines into docketing system in accordance with established procedures
Electronically file relevant case-related documentation into document management system in accordance with established procedures
Review amended patent rules and docketing procedure to ensure all prosecution requirements are met
Detect and correct data and record management inconsistencies utilizing U.S. and international Patent and Trademark Office databases when appropriate
Monitor all due dates to ensure deadlines are timely met, analyze internal correspondence to ensure appropriate docket removal
Generate dockets and assist attorneys, paralegals, and other support staff in the preparation of reports from the docketing system
Assist in managing patent acquisition, divesture and legal entity change projects
Assist in operational excellence initiatives making appropriate recommendations for work processes as needed