Sep 06, 2023
IP Paralegal
- Purdue Research Foundation
- West Lafayette, IN, USA
Full-Time
Administration
Entry Level
Job Description
Essential Functions
- Draft patent prosecution documents (shell amendments and responses to Office Actions) for attorney review
- Prepare USPTO forms for US and PCT patent application filing and prosecution.
- Prepare US 371 Nationalization documents.
- Electronically file applications, forms, amendments, and responses in the USPTO upon request.
- Search for and save US and foreign references and non-patent literature for use in Office Actions and
- Information Disclosure Statements.
- Prepare Information Disclosure Statements and download references to EFS Web for later submission upon
- request.
- Draft continuation and divisional patent applications for attorney review.
- Format US and PCT applications and drawing sheets as needed.
- Investigate and resolve patent related issues in-house, with the USPTO, and with WIPO.
- Review file histories, prepare Notice of Allowance Checklists and Issue Fee Transmittals, and pay issue fees upon
- request.
- Assist patent managers on resolving IP issues with USPTO, Inventors, licensees and other OTC Staff.
- Work closely with OTC Operations and other OTC staff to achieve IP objectives and metrics for OTC.
Additional Responsibilities
- Run Docket reports as back-up.
- Write/create queries for specialized docket requests.
- Calculate patent terms and update expiration dates for patents upon request.
- Prepare and forward correspondence to inventors reporting status of applications upon request.
- Respond to licensee requests for complete file histories and/or copies of documents to support invoices.
- Undertake special projects as assigned from time to time.
- Keep abreast of USPTO fee changes and other critical information required for job functions.
- Support Patent Managers generally, including occasional special projects.
- Serve as a knowledgeable resource for OTC staff and provide guidance, and ongoing support as needed.
Skills, Knowledge and Expertise
- Broad-based intellectual property background.
- Extensive experience with the USPTO’s online patent and trademark tools, including Private PAIR and EFS-Web.
- Excellent written and verbal communication skills.
- Exceptional organizational skills, along with the ability to complete tasks in an accurate and timely manner.
- despite numerous conflicting priorities and deadlines.
- Ability to independently and efficiently prioritize workflow and maintain an organized task schedule.
- Strong problem-solving skills.
- Experience with Microsoft Word, Excel, Outlook, One Drive, and Teams is required.
- Prior experience with IP Docket Systems and updating a docket is a plus.
Education/Experience
- Associate’s degree and Paralegal Certification required (an equivalent combination of education and experience may be considered).
- Bachelor’s Degree preferred.
- 1-3 years of professional experience as IP paralegal is required.
- Experience in working from a docket report to assist in patent attorneys meet various dates is preferred.
About Purdue Research Foundation
Purdue Research Foundation is an equal opportunity, affirmative action employer. PRF views, evaluates, and treats all persons in all Foundation-related activities solely as individuals on the basis of their own personal abilities, qualifications, and other relevant characteristics. All qualified applicants for employment will receive consideration without regard to race, religion, color, gender, national origin or ancestry, genetic information, marital status, parental status, sexual orientation, gender identity and expression, disability, or status as a veteran.
A criminal conviction check and negative controlled substance test are required for employment in this position.
A criminal conviction check and negative controlled substance test are required for employment in this position.
States
IN
Security Clearance
NO Security Clearance
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Purdue Research Foundation
The Purdue Research Foundation is a private, nonprofit foundation created to advance the mission of Purdue University. Established in 1930, the foundation accepts gifts; administers trusts; funds scholarships and grants; acquires property; protects Purdue's intellectual property; and promotes entrepreneurial activities on behalf of Purdue.
