Job Description
Position Description:
Paralegal, Patent Prosecution Support (Hybrid)
The Office of General Counsel is seeking a Patent Prosecution Paralegal to provide global patent prosecution support to the Intellectual Property (IP) organization. This position is responsible for supporting multiple patent attorneys, managing US and foreign dockets, and assisting with U.S. and foreign patent filing and prosecution. This position has a flexible hybrid office schedule based in Rahway, NJ.
A successful candidate should possess strong oral and written communication skills, be self-motivated and excel in a team environment. The candidate should also have a demonstrated capacity to manage and prioritize multiple tasks efficiently in a high-volume environment to timely meet all deadlines.
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Job responsibilities include, but are not limited to:
- Maintain an independent docket of tasks to be handled by the paralegal; independently draft and/or prepare simple to moderately complex legal documents including "shell" amendments (requests for continued examination, notices to file missing parts, certificates of correction) and prepare applications and other documents for filing
- Review notice of allowance and file history; prepare documents for internal review, including the preparation of allowed claims and payment of issue fee
- Independently draft and/or prepare responses to ex-US patent prosecution agents including, responding to requests for prior art disclosure and Form 3 requests during prosecution in Israel and India
- Demonstrate and maintain a strong working knowledge of US and foreign patent prosecution procedures, including familiarity with the Code of Federal Regulations (Title 37) and the Manual of Patent Examining Procedure (MPEP).
- Electronically file documents, including amendments and other responses, calculate and pay necessary fees using the United States Patent and Trademark Office's (USPTO) Electronic Filing System (EFS-Web) and/or Patent Center
- Proofread granted patents, with particular attention to the granted claims and application data and prepare certificates of correction where necessary
- Calculate patent term adjustment (PTA) using electronic tools
- Monitor the progress of patent applications and patent attorney dockets
- Correspond with inventors, outside counsel and foreign agents
- Ensure electronic prosecution documents are properly named and saved in the IP Group's document management system
- Review contents of patent application files to check for compliance with USPTO requirements and departmental standards and best practices
- Assist attorneys on patent-related projects including due diligence and acquisitions/divestures
- Effectively liaise with patent attorneys, filing specialists, docketing staff, and administrative associates, as appropriate
- A successful candidate may also be called upon to assist with other duties and special projects within the team/IP Group.
Commute/Location:
This role is based at our Headquarters site in Rahway (NJ), with a Hybrid setup (combination of 3 days in-office & 2 days off-site/remote). This position cannot be 100% remote.
Position Qualifications:
Education Minimum Requirement:
- High School degree required
- Associate's degree or Paralegal certificate preferred, but extensive relevant experience in patent legal support will be considered
Required Experience and Skills:
- Minimum of three (3) years of patent prosecution experience in a law firm or in-house legal department
- Substantive knowledge of US and foreign patent prosecution principles, strategies and technology, and strong legal advisory skills
- Ability to independently handle routine legal issues/documents with employees and third parties under direction of attorney as appropriate
- Ability to independently solve problems that arise within job responsibilities and expectations
- Ability to independently develop legal solutions for business issues with minimal supervision/support
- Accuracy & attention to detail in analyses and communications
- Ability to speak and write clearly and succinctly including on complex legal issues, and ability to craft effective communications that emphasize key points and ideas
- Effective time management to meet deadlines including project management skills, prioritization, consistent delivery of commitments, and ability to organize information and build upon ideas of others
- Autonomy on routine tasks as well as projects of greater complexity, and ability to recognize need for and seek further direction of attorney
- Discrete in handling sensitive and confidential information, and a high level of integrity
- Clear motivation and focus on achieving measurable, tangible results
- Willingness to adopt change
- Advanced Proficiency in MS Office Suite (Outlook, Word, Excel, SharePoint) and Adobe Acrobat
- Notary Public Commission (can be obtained after being hired into the role)
Preferred Experience and Skills:
- Specific experience supporting pharmaceutical or biotechnology patent prosecution
- Prior experience with PTA calculation, review, and analysis
- Proficiency with ChemDraw software and Sequence Listing ST.26
NOTICEFORINTERNALAPPLICANTS
In accordance with Managers' Policy - Job Posting and Employee Placement, all employees subject to this policy are required to have a minimum of twelve (12) months of service in current position prior to applying for open positions.
If you have been offered a separation benefits package, but have not yet reached your separation date and are offered a position within the salary and geographical parameters as set forth in the Summary Plan Description (SPD) of your separation package, then you are no longer eligible for your separation benefits package. To discuss in more detail, please contact your HRBP or Talent Acquisition Advisor.
Current Employees apply HERE
Current Contingent Workers apply HERE
US and Puerto Rico Residents Only:
Our company is committed to inclusion, ensuring that candidates can engage in a hiring process that exhibits their true capabilities. Please click here if you need an accommodation during the application or hiring process.
We are an Equal Opportunity Employer, committed to fostering an inclusive and diverse workplace. All qualified applicants will receive consideration for employment without regard to race, color, age, religion, sex, sexual orientation, gender identity, national origin, protected veteran status, or disability status, or other applicable legally protected characteristics. For more information about personal rights under the U.S. Equal Opportunity Employment laws, visit:
EEOC Know Your Rights
EEOC GINA Supplement
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We are proud to be a company that embraces the value of bringing diverse, talented, and committed people together. The fastest way to breakthrough innovation is when diverse ideas come together in an inclusive environment. We encourage our colleagues to respectfully challenge one another's thinking and approach problems collectively.
Learn more about your rights, including under California, Colorado and other US State Acts
U.S. Hybrid Work Model
Effective September 5, 2023, employees in office-based positions in the U.S. will be working a Hybrid work consisting of three total days on-site per week, Monday - Thursday, although the specific days may vary by site or organization, with Friday designated as a remote-working day, unless business critical tasks require an on-site presence.This Hybrid work model does not apply to, and daily in-person attendance is required for, field-based positions; facility-based, manufacturing-based, or research-based positions where the work to be performed is located at a Company site; positions covered by a collective-bargaining agreement (unless the agreement provides for hybrid work); or any other position for which the Company has determined the job requirements cannot be reasonably met working remotely. Please note, this Hybrid work model guidance also does not apply to roles that have been designated as "remote".
The Company is required to provide a reasonable estimate of the salary range for this job in certain states and cities within the United States. Final determinations with respect to salary will take into account a number of factors, which may include, but not be limited to the primary work location and the chosen candidate's relevant skills, experience, and education.
Expected US salary range:
$83,100.00 - $130,900.00
Available benefits include bonus eligibility, long term incentive if applicable, health care and other insurance benefits (for employee and family), retirement benefits, paid holidays, vacation, and sick days. A summary of benefits is listed here.
San Francisco Residents Only: We will consider qualified applicants with arrest and conviction records for employment in compliance with the San Francisco Fair Chance Ordinance
Los Angeles Residents Only: We will consider for employment all qualified applicants, including those with criminal histories, in a manner consistent with the requirements of applicable state and local laws, including the City of Los Angeles' Fair Chance Initiative for Hiring Ordinance
Search Firm Representatives Please Read Carefully
Merck & Co., Inc., Rahway, NJ, USA, also known as Merck Sharp & Dohme LLC, Rahway, NJ, USA, does not accept unsolicited assistance from search firms for employment opportunities. All CVs / resumes submitted by search firms to any employee at our company without a valid written search agreement in place for this position will be deemed the sole property of our company. No fee will be paid in the event a candidate is hired by our company as a result of an agency referral where no pre-existing agreement is in place. Where agency agreements are in place, introductions are position specific. Please, no phone calls or emails.
Employee Status:
Regular
Relocation:
No relocation
VISA Sponsorship:
No
Travel Requirements:
10%
Flexible Work Arrangements:
Hybrid
Shift:
1st - Day
Valid Driving License:
No
Hazardous Material(s):
N/A
Job Posting End Date:
10/29/2024
*A job posting is effective until 11:59:59PM on the day BEFORE the listed job posting end date. Please ensure you apply to a job posting no later than the day BEFORE the job posting end date.
Requisition ID:R316967