Patent Docket Specialist

MSD•Rahway, NJ

7h•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. 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 procedures. This position has a flexible hybrid office schedule based in Ranway, 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. Job responsibilities include but are not limited to: · 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 invention 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 timely and appropriate docket removal of completed items. · Generate dockets and assist attorneys, paralegals, and other support staff in the preparation of reports from the docketing system. · Assist in managing patent acquisitions, divestures and legal entity charge projects. · Assist in operational excellence initiatives making appropriate recommendations for work processes as needed. Position Qualifications: Commute/Location: This role is based at our Headquarters site in Rahway (NJ), with a Hybrid setup (combination of 3 days in office & 2 days off-site/remote). This position cannot be 100% remote.

Requirements

Minimum of three (3) years of patent docketing experience in a law firm or in-house legal department.
Substantive knowledge of US, PCT 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 Patent Center & EPAS and WIPO
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.
High School diploma or equivalent required

Nice To Haves

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
Associate degree, or paralegal certificate preferred

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 invention 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 timely and appropriate docket removal of completed items.
Generate dockets and assist attorneys, paralegals, and other support staff in the preparation of reports from the docketing system.
Assist in managing patent acquisitions, divestures and legal entity charge projects.
Assist in operational excellence initiatives making appropriate recommendations for work processes as needed.