Job#10319 - Intellectual Property Paralegal

Job#10319 - Intellectual Property Paralegal

POSITION OBJECTIVE

Working alongside the senior intellectual property manager, the IP Paralegal will be responsible for managing deadlines related to USPTO formal documents execution and submission to outside counsel in concert with best practices set by the Association of University Technology Managers.

ESSENTIAL FUNCTIONS

1. Coordinate active USPTO prosecution: assist the Senior IP Manager with United States Patent and Trademark Office (USPTO) office actions (including restriction requirements, rejections/objections, missing parts, information disclosure statement submissions, etc.). Serve as lead on creating and executing all formal document and assignment (including multi-party assignments) for the office’s entire portfolio of IP. (50%)
2. Coordinate the Invention Disclosure intake process (initial disclosure of ideas from faculty and staff): Review, troubleshoot, follow up with faculty, verify all federal, corporate, foundation, and local government sponsorship information with Case Western Reserve University grant/contract systems, including subcontract flow-through as the foundation of the office’s ability to maintain compliance with respect to (i) federal reporting obligations under the Bayh-Dole act (ii) myriad reporting obligations under corporate agreements. The IP Paralegal will assist the Senior IP Manager in reviewing this information. (20%)
3. Manage asset preservation audit system: Assist the senior intellectual property manager with maintenance, and periodically auditing the internal tracking of all pending legal matters (including alerting licensing professionals to upcoming prosecution deadlines and critical loss-of-rights dates). Loss of the University’s intellectual property rights is a risk that the incumbent must be capable of handling independently – deviating from established policy if necessary to maintain IP rights. When necessary, assist the Senior IP Manager with conducting complex rights-related research to clarify rights information on patent family assignments/ownership, priority dates, sponsorship constraints, and inter-institutional agreement provisions. (20%)

NONESSENTIAL FUNCTIONS

1. Work with the Contract and Compliance Coordinator to resolve updates and questions around Bayh-Dole Compliance (4%)
2. Coordinate data entry and filing activities of student employees (4%)
3. Perform other duties as assigned by supervisor. (2%)

CONTACTS

Department: Continuous contact with all Technology Transfer Office professional and support staff to review pending IP matters that require case manager attention (e.g. upcoming prosecution matters/deadlines, formal paper execution, power of attorney execute, maintenance fee payment, and continuing application decisions.

University: Constant contact with researchers (to obtain faculty and staff members signatures on assignment documents and formal papers, notarizing these signatures as required, and advising researchers on the interpretation of these documents/fielding questions on IP rights being conveyed by researchers); Frequent contact with the Office of the General Counsel (on matters of sole and joint assignments, power of attorney questions, etc), Occasional contact with Office of Sponsored Contracts (on grant support questions/background research).

External: Contact with government funding agencies (occasional – IP reporting assistance), attorneys (constant – primary liaison between TTO and all law firms), industrial organizations (occasional – when these orgs are co-owners and have joint IP questions), and Technology Transfer professionals at other institutions (occasional – when these orgs are co-owners and have joint IP questions).

Students: Occasional contact when seeking assistance with IP docket entry support.

SUPERVISORY RESPONSIBILITY

Coordinate and oversee work study students where appropriate.

QUALIFICATIONS

Experience: 2 or more years of experience in a legal or similar position required; experience in intellectual property law preferably in a research or university setting.

Education/Licensing: Bachelor’s Degree required; additional legal training/certification is highly desired.   

REQUIRED SKILLS

1. Knowledge of legal databases and patents.
2. Ability to work with highly complex material, both legal and technical.
3. Ability to process work with a sense of urgency, while paying attention to detail.
4. Ability to work in a fast-paced environment and to handle multiple tasks.
5. Ability to remain calm and deal with high pressure situations diplomatically.
6. Excellent oral and written communication skills.
7. Must be organized with demonstrated ability to work with little or no supervision.
8. Must possess the ability to prioritize workload efficiently.
9. Must possess the ability for independent problem solving.
10. Must display a professional demeanor and appearance.
11. Must possess sound judgment and discretion, as well as confidentiality.
12. Ability to meet consistent attendance.
13. Ability to interact with colleagues, supervisors and customers face to face.

WORKING CONDITIONS

General office working environment.  Will be required to meet with other employees and researchers in their locations on campus.

TO APPLY

Visit https://case.edu/hr/careers. Job#10319