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Patent Paralegal


Irunway India Private Limited(UnitedLex)


Location

Gurgaon | India


Job description

About Us: iRunway (Erstwhile UnitedLex) is a data and professional services company delivering outcomes for high-performing law firms and corporate legal departments in the areas of digital litigation, intellectual property, contracts, compliance, and legal operations. Founded in 2006 with a mission to push the boundaries of legal innovation, we provide solutions that enable measurable performance improvement, risk mitigation, revenue gain, cost reduction, and digital business synergy.

JOB DESCRIPTION JOB TITLE: Patent Paralegal (Assistant Manager/Consultant) Business Unit/Deal: ULX India Primary Business / Managed Services (IP) Reporting Structure:

Manager/Sr. Consultant Location : Gurugram/Bengaluru

OVERALL PURPOSE OF JOB: The Patent Paralegal is responsible for individual contribution as part of the UnitedLex IP Managed Services. Primary day to day focus will be on various patent-related paralegal and docketing activities Candidates should have particular strengths in teamwork (internal and external stakeholders), quality control, file/docket and problem-solving. They must also have strong interpersonal skills to build strong relationships with internal and external stakeholders.

REQUIREMENTS: · Strong academic background · 5+ years progressive work experience as a patent paralegal at a law firm or in-house · At least one year of experience using CPI/Anaqua/FIP is a plus · Knowledge and experience working with the United States Patent and Trademark Office · Knowledge and experience working with the European Office is a plus · Excellent written and verbal communication skills · Ability to communicate effectively with other professionals in the legal department and business teams · Detail-oriented with excellent judgment and analytical skills · Able to juggle multiple tasks - dynamic, and action-orientated, which meets deadlines and makes it happen. · Ability to work collaboratively with an onsite and/or virtual global teams · Proficient in Microsoft Word, Outlook, Excel and related software programs COMPETENCIES: · Excellent organizational skills including record keeping, data collection, and system information. Ability to compile and furnish concise, detailed information in report format, written correspondence, email, or verbally. · Must have ability to build and maintain relationships and work confidently with people at all levels. · Must be an excellent communicator (written and verbal) with the ability to earn trust and credibility. · Must have ability to demonstrate a high degree of confidentiality · Must be willing to accept responsibility and make decisions based on experience, education and understanding of business needs. · Fast learner able to grasp business needs and priorities quickly. · Critical thinking: able to evaluate information gathered from multiple sources and distinguish user requests from the underlying true needs. · Possess general working legal knowledge and specific client and company operations (preferred) · Excellent organizational skills, ability to manage multiple assignments at once, and meet deadlines · Proficient in technology and tools used by the company and with the client KEY RESPONSIBILITIES: · Tracking and managing PTO communications including, but not limited to, new applications. Office Action responses, Information Disclosure Statements, assignments, and related ownership transfers, etc., on the docketing tool. · Preparing Filing forms, POAs, IDS AND ADS · Supporting the Patent Attorneys in the preparation of prosecution work · Assisting in daily quality assurance review for patent filings, as well as general audits to review portfolios · Supporting the Patent Attorneys on Opposition matters, including, including but not limited to, preparing the opposition file, updating further submissions and uploading documents as necessary · Reviewing documentation as instructed by Patent Attorneys · Supporting annuities and recordal activities · Using internal and external databases to obtain patent documentation · Reviewing patent docket and deadlines daily · Ordering documents, file histories, certified copies, etc. · Maintaining current knowledge of IP rules and procedures · Tracking and managing outside counsel/vendor communications o Foreign prosecution-related tasks such as preparation and filing of PCT applications and associated non-U.S. prosecution filings. o Formality requirements associated with national and regional stage entry specific to each country. · Analyzing issued U.S. patents for proper Patent Term Adjustment · Training and mentoring junior team members. Performing quality checks.


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