BD (Becton, Dickinson and Company) IP Paralegal/Specialist in Tempe, Arizona

We are seeking a driven, motivated individual contributor and talented IP Paralegal/Specialist who will assist and support the IP Law Group responsible for the IP portfolio of the Peripheral Intervention business unit. The position will report to the Associate General Counsel – IP.

The IP Paralegal/Specialist assists and supports the IP Law Group in handling IP portfolio matters including new inventions, patent filings, royalties and IP agreements. The IP Paralegal/Specialist is responsible for establishing and maintaining the IP docketing and document management systems, daily docketing of incoming patent-related correspondence, maintaining the integrity of the IP docketing system, monitoring deadlines and working with attorneys to ensure that deadlines are met. The IP Paralegal/Specialist role also involves communication with outside counsel (both domestic and international) and with internal customers, including senior management.

  • Responsible for managing a comprehensive internal patent docketing system to monitor and track patent prosecution deadlines. Responsibilities include maintaining the accuracy and completeness of all docket prosecution deadline data, invention information, third party patents and license information. FIP and Anaqua experience preferred.

  • Review and docket all incoming and out-going IP related mail received from patent and trademark offices worldwide, and US and exUS agents. Communicate with patent offices, outside counsel, and in-house attorneys regarding docketing and prosecution matters. Quality control review of outside counsel docketing.

  • Prepare reports for IP metrics. Run queries, analyze data and prepare accurate and professionally presented reports including: 1) upcoming patent prosecution deadlines 2) monthly new filings, issuance and abandonment reports and 3) other routine or periodic reports as requested.

  • Monitor and track annuity and maintenance fee payments, including overseeing outside annuity vendors. CPA and Anaqua experience preferred.

  • Maintain electronic files and databases with accuracy and ensure accessibility of information. Manage transition of paper and electronic files to Anaqua.

  • Keep abreast of changes in worldwide patent office rules and procedures. Assess impact and propose process changes to ensure continued compliance.

  • Prepare patent family reviews. Conduct patent and trademark searches including patent landscape, technology area or competitor IP searches and provide initial evaluations

  • Manage communications with outside counsel, including, ensuring that outside counsel complies with reporting requirements. Handle invoices from outside counsel.

  • Solicit, assemble, draft, process and docket invention disclosures. Coordinate Invention Review Board meetings and track progress of invention disclosures. Collect inventor signatures and notarize documents as required. Communicate with internal clients regarding patent prosecution requirements, procedures and status. Manage payouts to inventors of patent incentive program and order patent awards as needed. Maintain Inventor Hall of Fame database.

  • Assist with IP due diligence associated with acquisitions and licensing transactions. Provide support during pre-acquisition diligence activities by obtaining and reviewing patent information for potential targets. Upon the completion of an acquisition, oversee the remainder of the life of the acquired patent(s) and incorporate patents into portfolio and databases.

  • Assist in training employees in IP matters, including new employee orientation.

  • Responsible for general administrative support such as organizing meetings, arranging travel, preparing expense reports, creating and formatting presentation slides, drafting letters, copying, scanning, proofreading, etc.

  • Maintain strict confidentiality of files and information.

  • Perform various special projects and undertake legal research as and when required. As needed, assist others in IP Law Group with day to day tasks in view of vacations, workloads, volume, etc.

  • The IP Paralegal/Specialist role involves communication with outside counsel (both domestic and international) and with internal customers, R&D product development, senior management and law group professionals.

  • The IP Paralegal/Specialist manages outside counsel invoices via the Serengeti Legal Tracker billing system. The IP Paralegal/Specialist is responsible for inventor awards, patent plaques and annual Hall of Fame dinner.

  • Excellent verbal, written, interpersonal and presentation skills. Expresses self clearly and effectively when talking with individuals and groups. Collaborate in an effective and mature manner with attorneys, paralegals and other co-workers.

  • Excellent analytical and organization skills, attention to detail, including the ability to prioritize and multi-task to perform role smoothly without missing deadlines.

  • A proactive self-starter who can respond quickly and positively to shifting demands and opportunities; ability to work under tight deadlines and prioritize projects and assignments, independently following up as needed. Ability and willingness to occasionally work extended hours as needed to complete projects in a timely manner. Must pay attention to details and have the ability to follow up and follow through.

  • Demonstrated team player with willingness to collaborate and perform tasks outside of immediate job description when necessary to benefit the department as a whole.

  • Experience, working ability and confidence with Microsoft databases, spreadsheets, word processing, presentations and email software packages. Strong computer skills including IP docketing software.

  • Strong analytical and problem-solving skills and ability to identify and suggest improvements in processes and tools. Ability to formulate logical solutions to problems and construct well-founded arguments in support of specific positions. Ability to identify and evaluate alternative solutions.

  • Knowledge of legal rules of professional responsibility and ethics.

  • Ability and willingness to work independently with minimal guidance. Self-starter that works independently with minimal supervision for patent-related assignments and takes the initiative to accomplish objectives in a timely manner.

  • Sound professional judgment in applying company policies and procedures. Ability to answer questions relative to functional area that may require additional research and follow-up.

  • 5+ years’ experience with in-house legal department and/or law firm in an IP legal environment. Prior IP docketing experience required.

  • Knowledge and experience of USPTO and PCT rules, procedures, forms and formal documentation. Experience preparing and filing documents at the USPTO via e-filing including basic patent office transmittals, responses to missing parts, IDSs, and responses to office actions. Experience with international patent formal documentation.

  • Comprehensive knowledge and experience with official intellectual property websites, i.e. USPTO, WIPO, EPO, IPADOC, CIPO, AusPat.

  • Knowledge and experience with all forms of intellectual property strongly preferred.

  • Notary public preferred, not required.

  • Knowledge of medical device industry preferred.

  • Associates degree preferred

  • Patent paralegal course or paralegal certification preferred

  • 5+ years’ experience with in-house legal department and/or law firm in an IP legal environment

While performing the duties of this job, the employee is regularly required to stand, walk, sit and use hands to manipulate, handle or feel objects, tools, controls and office equipment. The employee frequently is required to talk and hear. The employee is occasionally required to reach with hands and arms and stoop, kneel or crouch. The employee is regularly required to move files and storage boxes containing legal files.

Becton Dickinson is an affirmative action, equal opportunity employer that values and actively seeks diversity in the workforce.

While performing the duties of this job, the employee may be in an open cubicle environment. Candidate must be able to work in a team-oriented, fast-paced environment.

ID: 2018-12049

Career Level: experienced

Division Name: Bard Peripheral Vascular

External Company Name: C.R. Bard, Inc.

External Company URL: www.crbard.com

Street: 1415 W. 3rd Street

C. R. Bard, Inc. (NYSE: BCR) is a leading multinational developer, manufacturer and marketer of innovative, life-enhancing medical technologies in the fields of vascular, urology, oncology and surgical specialty products, employing over 13,000 people around the world. Founded in 1907, we pioneered many devices that are now the cornerstones of modern healthcare.

We expect the highest levels of quality, integrity, service, and innovation from our employees – on the job and in the communities in which we work and live. In return, we foster an environment where individuals are treated with fairness and respect, and feel valued, acknowledged and rewarded. Bard is a M/F, Disabled and Vet EEO/AA Employer.

Be Your Best at Bard – and ultimately, you can have an impact on the lives of people around the world.