Patent Paralegal III

Work Schedule

Standard (Mon-Fri)

Environmental Conditions

Office

Job Description

This is a hybrid opportunity at our Pittsburgh, PA or Hillsboro, OR site

Are you interested in advancing Thermo Fisher Scientific’s mission of enabling our customers to make the world healthier, cleaner, and safer?  If so, Thermo Fisher has an exciting opportunity for an individual with excellent judgment, strong interpersonal skills, initiative to take on diverse responsibilities across the legal department, passion for continuous improvement, and proactive approach to join our team in the role of Patent Paralegal.

At Thermo Fisher, we thrive in a culture of learning and development and are looking for a candidate that can do the same.  This position will allow you flexibility and opportunities for growth by regularly supporting a variety of projects outside ordinary paralegal responsibilities and collaborating with colleagues outside the paralegal team.  Success in this role will come not only from exceptional paralegal skills, but also excellent judgment, strong communication skills, initiative to pick up diverse responsibilities across the legal department, and a passion for continuous improvement.

This role can be based at Thermo Fisher’s Pittsburgh, Pennsylvania or Hillsboro, Oregon area locations and has flexibility for hybrid work.

Responsibilities:

Support 4-6 patent attorneys/agents with their prosecution dockets:

• File documents with the US Patent and Trademark Office using USPTO electronic filing system (Patent Center).
• Prepare, revise, and finalize US and PCT applications and other core prosecution documents for filing (e.g., missing parts, restriction, responses/amendments, allowance, ePCT requests and eActions).
• Monitor and prepare Information Disclosure Statements.
• Review and process a high volume of IP-related communications and correspondence from foreign associates, outside counsel, and in-house practitioners, and follow up in accordance with internal protocols.
• Build strong rapport and conduct regular docket review meetings with agents and attorneys.
• Correspond with inventors, outside counsel, and non-US associates on active dockets; respond to inquiries and provide requested documents.
• Review, monitor, and clear out items from docket reports including past-due deadlines in IP management system (Symphony) in accordance with internal protocols.
• Manage file histories and ensure contents are accurate and up to date.
• Arrange for signatures on declarations and assignments, powers of attorney.

Engage in a variety of IP operations responsibilities that are critical to the effective functioning of the IP Department, including:

• Manage IP data and records in the IP management system (Symphony) and internal IP sites and ensure data accuracy.
• Manage IP incentive awards program, including accuracy check of award reports and processing payments as appropriate.
• Develop standard operating procedures and provide training, access, and technical support to IP practitioners, inventors, and outside counsel as appropriate.
• Generate reports for internal team member and partner queries, including finance and tax departments.
• Assist with special projects such as vendor management, data clean-up, and process improvement.
• Collaborate with patent paralegals and other legal department colleagues across various national and international locations.
• Provide backup support as needed.

Education and Experience:

• Bachelor’s degree and/or paralegal certificate from an ABA-approved education program.
• 5-7 years of patent prosecution experience, using an electronic IP management system (Symphony strongly preferred) and experience in IP operations.
• Notary Public or willingness to become one.

Minimum Qualifications:

• Strong knowledge of patent lifecycle from invention through maintenance, and US/non-US patent prosecution country law, procedures, annuities, and deadlines.
• Proficiency in Microsoft (Outlook, Word, Excel, PowerPoint), Adobe Acrobat, and Docusign. 
• Proficiency with collaboration platforms such as Microsoft Teams and Sharepoint.
• Proficiency with USPTO Patent Center and preparation of applications using ePCT.
• Ability to work well under pressure and adapt to changing priorities while maintaining a high level of productivity.
• Strong interpersonal skills; ability to work independently and to establish working relationships to collaborate with colleagues across global locations. 
• Strong analytical and problem-solving skills with an ability to identify issues, develop creative solutions, and process information quickly.
• High level of organization and attention to detail, with accurate data entry, proofreading, and reading comprehension skills.
• Experience in project management and process improvement.
• Flexibility to work overtime with minimum travel.