IP Paralegal III

Working with Us
Challenging. Meaningful. Life-changing. Those aren’t words that are usually associated with a job. But working at Bristol Myers Squibb is anything but usual. Here, uniquely interesting work happens every day, in every department. From optimizing a production line to the latest breakthroughs in cell therapy, this is work that transforms the lives of patients, and the careers of those who do it. You’ll get the chance to grow and thrive through opportunities uncommon in scale and scope, alongside high-achieving teams rich in diversity. Take your career farther than you thought possible.

Bristol Myers Squibb recognizes the importance of balance and flexibility in our work environment. We offer a wide variety of competitive benefits, services and programs that provide our employees with the resources to pursue their goals, both at work and in their personal lives. Read more: careers.bms.com/working-with-us.

Paralegal Responsibilities

• Advanced knowledge of US and foreign patent procedures M

• Monitors progress of patent cases and patent attorney/agent dockets through use of USPTO Private PAIR, IP Management Software and Document Management System and seeks to reconcile any noted discrepancies.

• Demonstrated efficient workload prioritization including the ability to efficiently manage multiple heavy dockets, multiple tasks, and e-mail workload including outside counsel e-mail review.

• Reviews patent application files to check for compliance with USPTO requirements and BMS department standards, takes initiative to resolve discrepancies.

• Reviews correspondence received from U.S. outside counsel law firms and expertly liaises with agents to ensure they are in compliance with BMS processes and procedures and USPTO rules and provides them with instructions and guidance in order to meet compliance.

• Expert knowledge and working experience of the USPTO Patent Center filing system in order to independently draft and prepare simple to moderately complex patent legal documents for submission to the USPTO including (but not limited to) patent applications, figures, sequence listings, amendments, information disclosure statements, office action responses, requests for continued examination, notices of appeal, reply briefs, Allowance Checklists, Allowed Claims, issue fee payments ,etc.

• Knowledge and expertise to customize/suggest language changes on forms as applicable to specific patent prosecution need.

• Identifies patent legal issues and/or problems based on knowledge of PTO procedures and suggests and/or takes initiative to resolve.

• Advanced skills to independently draft and assist with attorney responses to worldwide foreign patent agents.

• Expert use and application of the Code of Federal Regulations (Title 37) and the Manual of Patent Examining Procedure (MPEP) to enable ability to identify legal issues/problems based on knowledge of PTO procedures.

• Proficiently performs Patent Term Adjustment review and analysis and delivery of analysis summary to patent attorney/agent and independently drafts petitions for PTA reconsideration.

• Participates in best practice group meetings in order to provide input and feedback to promote consistent administrative procedures.

• Liaises with docketing group by providing guidance on USPTO prosecution as it pertains to deadlines and workflows that impact the paralegal group.

• Advanced oral, writing, and communication skills including procedural document writing skills.

• Excellent organizational and accountability skills, takes initiative to follow up with inventors, counsel and agents to meet critical deadline dates.

• Sets own standards of high performance and works to exceed standards; takes initiative to expand own knowledge of PTO rules.

• Assists with onboarding and mentoring legal assistants and paralegals and provides backup support when needed. Frequently provides backup and support to legal assistants and paralegals. Demonstrated track record and valued resource to management.

General

• Expert knowledge of Microsoft Office 2013 including Outlook, Word, Excel

• Advanced knowledge of IP Management Software and Document Management Software

• Advanced form editing capability in Adobe Acrobat Pro

• Advanced proficiency in use of basic to advanced forms including IP Management Software generated forms.

• Strong skills and experience with Patent-In software to generate sequence listings.

• Proficient knowledge and use of domestic and foreign patent databases, e.g., PCT Scope; EPO Online, etc.