IP Admin Senior Analyst (Patent Paralegal)

We are hiring an IP Admin Senior Analyst (Patent Paralegal) to join the Intellectual Property team at Clarivate. In this role, you will be providing end-to-end IP lifecycle management support to our clients and help them reduce the cost of their operations, enabled by strong operational delivery, supplemented with continuous improvement. You will be responsible for providing patent and/or trademark administrative support to assigned clients, with the primary goal of maintaining the accuracy and integrity of our clients’ patent and trademark management software. 

This position will report to the Sr. IP Paralegal Manager and work with other talented IP Paralegal team members, all of whom share a passion for customer service and providing highly diverse and complex IP paralegal support to our clients.

About You – experience, education, skills, and accomplishments

• 1+ year of recent U.S. and foreign patent and/or trademark filing & prosecution and/or docketing experience in a patent docket environment 

• 1+ year of experience with patent and trademark management software, such as, Memotech, Foundation IP, The IP Management System, Inprotech, IPFolio

It would be great if you also had...

• Bachelor's degree in a related field

• Paralegal certificate

• Knowledge in maintaining patents after issuance including annuities, maintenance fees, and/or renewals

• Proficiency in MS Outlook, MS Word, MS Excel, IPDAS, USPTO PAIR, EFS and EPAS

• Proficiency with time and billing tracking software preferred

• Strong customer focus and proven record of exceptional service delivery

• Ability to complete critical tasks with global teams in a matrixed environment

What will you be doing in this role?

• Monitor incoming communications received from outside counsel, foreign agents, USPTO and other patent and trademark offices to ensure timely review and processing

• Routinely review and file prosecution related documents with the USPTO for all stages of prosecution. Also coordinate and facilitate timely instructions to foreign agents in order to meet deadlines for non-US patent or trademark prosecution deadlines

• Prepare basic patent documents and/or trademark registrations, including classes and specimens, for client execution and file same at the USPTO, including declarations, assignments, powers of attorney, etc., and electronically file (EFS) documents at the USPTO, including applications, amendments, assignments, responses, petitions, information disclosure statements, issue fees

• Review Official Filing Receipts, Notices of Recordation of Assignment, Notices of Allowance, Issue Notifications, etc. for accuracy. Prepare reporting letters to clients. If required, prepares a request for correction, when applicable

• Prepare and forward reporting letters to clients regarding Office Actions and other USPTO communications, such as Notices to File Missing Parts, trademark oppositions and related notices

• Prepare and forward reporting letters to clients regarding USPTO filings, communications to and from foreign patent associates for U.S. National Phase applications, etc. 

• Prepare and forward reminders to clients regarding due dates and instructions including but not limited to, forward Letters Patent to the client and file Fee Address Indication forms for the annuity service provider selected by the client

• Review application papers being filed in the USPTO for accuracy and completeness regarding inventors, assignees, priority data, etc.