IP Paralegal

Annual Wage Range: $69,915.20  - $96,133.40 
Other Compensation:  Eligibility for the Short-Term Incentive program and other applicable bonuses 
Benefits: U.S. Employee Benefits Summary (grace.com)

Final salary and compensation will be based on several factors including candidate qualifications and experience, geographical location, market, and business considerations.

Grace, a Standard Industries company, is a leading global supplier of specialty chemicals and solutions that enable industries to enhance modern life. Our customers use our catalysts, engineered materials, process technologies and fine chemicals to manufacture everyday products – like renewable fuels, pharmaceuticals and food packaging – better, faster and smarter. Our thousands of employees work to harness the power of science for a better world at our global headquarters in Columbia, MD and locations worldwide. For more information, visit Grace.com.

Job Description

W.R. Grace (“Grace”) is looking for a seasoned IP Paralegal reporting to the VP and Chief IP Counsel for Grace. The ideal candidate will have proven ability to independently shoulder the following responsibilities.

Responsibilities

• Manage patent and trademark prosecution dockets including tracking docket dates to ensure in-house and outside counsel are timely meeting docket due dates.
• Maintain files for matters handled by outside and in-house counsel.
• Assist with IP portfolio management, including updating portfolio status reports
• Manage and resolve routine matters that do not require direct in-house attorney assistance or instruction.
• Provide guidance on patent maintenance decisions, requests for examinations, information disclosure statements, use of USPTO Patent Center, and the like.
• Serve as liaison between Outside Counsel and Grace Technical/ Business Personnel.
• Onboard new law firm vendors and manage the administration of law firm billing through Legal Tracker billing software.
• Communicate with law firms to resolve billing issues.
• Generate and analyze legal spending reports and assist with optimizing the use of Legal Tracker within the Grace Legal Department.
• Manage correspondence and prepare declarations, powers of attorney, agreements, foreign filing instructions, and the like for execution of Grace’s technical and business personnel.
• Communicate between patent attorneys, business segment managers and inventors, such as memoranda concerning filing confirmation, IDS submissions, office actions, allowances, and the like.
• Support agreement work (including confidentiality, research, testing, and joint development agreements) generated for the SC business segment.
• Support IP Department with other activities such as prior art searching/acquisition activities (due diligence).
• Obtain file histories, document translations, non-patent prior art, and overflow IP docket (patent and trademark) and IP agreement work from other paralegals in department.
• Address routine trademark related questions in conjunction with outside counsel.

Required Qualifications

• Bachelor’s degree OR Paralegal certificate
• 5+ years of experience as a patent paralegal at a law firm or in-house legal department
• Excellent organizational skills
• Strong verbal and written communication skills
• Independent and collaborative work ethic
• Close attention to detail
• Proactive
• Takes initiative in seeing tasks to completion
• Flexibility when handling multiple projects
• Approachable and positive attitude
• Database, Web/Search, and Computer Skills (e.g., www.uspto.gov, Patent Center)
• Microsoft® Outlook, Word, Excel, and PowerPoint, as well as Adobe Acrobat (PowerPoint experience with SharePoint will be a plus)
• Outlook and Teams

Preferred Qualifications

• Experience with Legal Tracker billing software, though Grace will provide training if needed.
• Experience supporting trademark filing.
• Experience supporting patent filing and pros