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The Lead Intellectual Property Paralegal leads a team of IP Paralegals and Docketing Specialists all of whom work collaboratively with IP attorneys, patent agents, and patent technology specialists to develop and maintain an online database of patent, trademark, and copyright filings; docket and monitor related activities and due dates; coordinate execution of instructions and documents; and help supervise work by outside counsel.
Job Responsibility:
Leads a team of IP Paralegals and Docketing Specialists
Serves as a content expert on numerous IP-related projects
Directs the training and workload of the docketing specialists and IP Paralegals
Interacts with faculty and staff members across the Institute as well as licensing entities, collaborating institutions, law firms, and IP-related vendors
Provides intellectual property counseling, strategic analysis, and portfolio management services to the Institute
Manages a team of Intellectual Property Paralegals and Docketing Specialists
Collaborates with the Director of Legal Operations on IP-related projects
Maintains the Institute’s intellectual property assets and related correspondence within the electronic database as well as hard copies of original executed documents and trademark specimens
Oversees the search and implementation of specific IP-related vendors
Directs and monitors the IP assets management in Minuet InteumTM, invoicing, and patent maintenance fee payments
Monitors docketing of deadlines and due dates in the IP database
Oversees the sending of prosecution instructions and assists the IP attorneys with supervising outside companies, institutions, and law firms in the acquisition and maintenance of IP assets by reviewing and commenting on invoices, identifying issues, and recommending solutions
Monitors the preparation and execution of formal documents, such as Powers of Attorney, IP assignments, and declarations with direct engagement with investigators
Manages team meetings via maintaining the agenda, keeping minutes, and communicating meeting decisions
Works closely with technology transfer professionals in the Belfer Office for Dana-Farber Innovations to support marketing, sponsorship, licensing, and compliance efforts
Recruits, trains, and supervises new IP support staff members and interns
Responsible for updating and developing training and instructional documentation and materials for the IP team
Assist IP team with intellectual property protection filings by monitoring conflict checks from law firms for new intellectual property matters, coordinating requests from outside counsel for additional documents and/or data to support protection filings, proofreading drafts, providing templates, and drafting transfer letters
Coordinates IP Paralegals and Docketing Specialists coverage, including the review and approval of weekly time sheets
Works with IP leadership to identify and accomplish the team’s fiscal year goal(s)
Requirements:
Bachelor’s degree
At least 5 years of experience in intellectual property, preferably in a law firm, in-house department, or technology-focused business environment
Extensive knowledge of U.S. and international patent/trademark prosecution procedures and related policies
Expertise in computer applications, including experience with USPTO portal filings, intellectual property database software, and tools like Inteum Minuet™, CPI, and LEDES™
Outstanding written and oral communication skills
Critical thinking skills
Exceptional organizational skills and adeptness at prioritizing tasks
Strong customer service skills and professionalism
Ability to manage and protect highly confidential and sensitive information
Excellent attention to detail and research abilities
Ability to work effectively in an atmosphere of multiple projects and shifting priorities
Demonstrated ability to coordinate complex projects and other assignments
Ability to manage relationships and motivate groups of people
Good conflict resolution and organizational skills