Patent Paralegal II

Roche•South San Francisco, CA

2d•Onsite

About The Position

Genentech’s Intellectual Property team is seeking a Patent Paralegal who will provide a high level of paralegal support in all facets of US Patent Law to three or more patent attorneys in the Genentech IP Team. The ideal candidate must possess advanced knowledge of Patent and Trademark (PTO) rules and procedures, be proficient at navigating Patent Center and Assignment Center, and a strong knowledge of and ability to keep abreast of 37 C.F.R. rules and MPEP rules. This position reports directly to a Principal Paralegal Team lead in the Genentech IP Team. Come join our passion for creating and leveraging game-changing IP strategies that enable Genentech to “do now what patients need next!” The Opportunity Key responsibilities of this individual contributor role includes the following: Preparing and filing US Patent correspondence, transmittal documents, and formality documents (Declarations and Assignments). Prepare and manage Information Disclosure Statements (IDS) for US and Israel, including the ability to comprehensively review art cited across large family/portfolios. Correspond with foreign associates and outside counsel relating to all patent prosecution matters. Generate weekly docket reports and coordinate with attorneys, colleagues, foreign associates and outside counsel to ensure all deadlines are met. Create, organize and maintain electronic US and foreign patent files. Contribute to the general needs of the Patent and Legal groups. Some examples include providing back-up assistance to peers, and participating on special projects and/or other activities as requested. Key Competencies Key competencies of this individual contributor role includes the following: Embraces a growth-mindset and enjoys working in a fast-paced and diverse global organization. Excels at working independently and proactively with minimal direction, has strong organizational skills, and the ability to prioritize and balance competing projects and responsibilities. Engages actively in Group, Department, and cross-functional projects and initiatives where strategies, processes, operating standards and/or practices are developed and deployed, to ensure the highest quality IP portfolios in a high-performing, agile team setting. Embraces and fosters a team and organizational culture that reflects a commitment to diversity, equity, inclusion, and community. Who You Are Qualifications and experience needed for this role include the following: A minimum of 5-7 experience in patent prosecution and IDS work required. High school diploma required. Bachelor’s degree preferred. Experience with biotechnology patent prosecution, inclusive of the following: Advanced knowledge of Patent and Trademark (PTO) rules and procedures. Proficient at navigating Patent Center and Assignment Center. Strong knowledge of and ability to keep abreast of 37 C.F.R. rules and MPEP. Experience using the USPTO electronic filing system as well as a patent docketing system (IP Manager, CPI, CPA, Anaqua etc.) is required. A minimum of intermediate-level of professional technical proficiency in Microsoft Word, Excel, PowerPoint, and Adobe Acrobat. Experience with First to File, Google Workspace collaboration tools, Lecorpio (IDS), and iManage is extremely beneficial. Strong skills in the following areas: Organization, attention to detail, and analytical abilities. Effective written and verbal communications to include clarity and tact. Ability to perform and prioritize multiple tasks simultaneously, efficiently, and collaboratively in accordance with deadlines. Proactive, self-disciplined and able to work independently with minimal supervision.

Requirements

A minimum of 5-7 experience in patent prosecution and IDS work required.
High school diploma required.
Advanced knowledge of Patent and Trademark (PTO) rules and procedures.
Proficient at navigating Patent Center and Assignment Center.
Strong knowledge of and ability to keep abreast of 37 C.F.R. rules and MPEP.
Experience using the USPTO electronic filing system as well as a patent docketing system (IP Manager, CPI, CPA, Anaqua etc.) is required.
A minimum of intermediate-level of professional technical proficiency in Microsoft Word, Excel, PowerPoint, and Adobe Acrobat.
Strong skills in the following areas: Organization, attention to detail, and analytical abilities.
Effective written and verbal communications to include clarity and tact.
Ability to perform and prioritize multiple tasks simultaneously, efficiently, and collaboratively in accordance with deadlines.
Proactive, self-disciplined and able to work independently with minimal supervision.

Nice To Haves

Bachelor’s degree preferred.
Experience with biotechnology patent prosecution
Experience with First to File, Google Workspace collaboration tools, Lecorpio (IDS), and iManage is extremely beneficial.

Responsibilities

Preparing and filing US Patent correspondence, transmittal documents, and formality documents (Declarations and Assignments)
Prepare and manage Information Disclosure Statements (IDS) for US and Israel, including the ability to comprehensively review art cited across large family/portfolios
Correspond with foreign associates and outside counsel relating to all patent prosecution matters
Generate weekly docket reports and coordinate with attorneys, colleagues, foreign associates and outside counsel to ensure all deadlines are met
Create, organize and maintain electronic US and foreign patent files
Contribute to the general needs of the Patent and Legal groups
Providing back-up assistance to peers
Participating on special projects and/or other activities as requested

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