Job Description

We are currently looking for an experienced patent paralegal / docketing professional to support our IP team in Saint-Gobain Research India. The person will be responsible for supporting patent counsel and coordinate and manage the team's day-to-day activities in multiple work-streams. The role will also have the opportunity to contribute individually. This position requires a high degree of autonomy to take proactive initiatives and have high accountability. There is a strong emphasis on good written and oral communication and collaboration skills. The position requires a professional with core experience of at least 1-2 years in a patent paralegal role. The professional should have absolute clarity on Indian patent prosecution procedures and PCT procedures. Exposures to filing and prosecution of national phase application in Asia Pacific region may be preferred. The position involves 50% core IP activities and 50% of non-IP activities.

Core IP Activities

Assist Patent Agents in managing patent and design portfolio

Attend to the completion of formality requirements with inputs from the patent counsel

Report preparation on various activities of the IP team

Assisting the counsel on need basis during hearings

Agreement printing, execution, tracking and follow-ups as and where required

Facilitate the patenting process in Indian including but not limited to filing Indian Patent applications, responses to FER (and attending formal objections), filing various forms, PCT applications, pre-grant and post grant oppositions working statements among others

Well aware of formalities and procedural aspects involving pre/post grant filing

Coordinating with external foreign agents and tracking the applications filed in foreign jurisdictions and the taking care of the related requirements with minimal assistance from counsel

Filing and prosecution of design applications in India and tracking thereof

Monitor local and global patent publications / Journal publications

All activities associated with renewal / annuities of patents and designs, to be kept a track of

Liasoning with patent office professionals on various aspects such as and not limited to follow-ups, status check etc.,

Proficient in IP filings through electronic filing system

Invoicing and archiving documents

Data retrieval using InPass, Espacenet and Patentscope. Added advantage if aware of retrieval of information from DI, Orbit etc

Non-Core IP Activities

Tracking minutes and scheduling meeting as per the request of patent counsel

Prepare for and attend meetings with internal teams, local counsel and /or local business colleagues (including agenda management, minute-taking follow-up, at the team leader's instruction)

Proofreading of specification and all other documents

Help with the budgeting process, including working with the finance team for payments

Keep record of legal documents to be signed by partners, stakeholders and agents as well as file documents in archive and other internal databases

Review, draft, amend and handle patent and standard legal documents such as power of attorney, notice letters, petitions, assignments and request letters among others

Ability to prepare process flows and suggest systems for betterment of work flow

Electronic document management, efficient record keeping and management, organizing and maintaining physical and electronic files as per standards

Scanning, printing, photo copying, shipping, docketing documents

Travel to patent offices to resort to outstanding issues or future issues, follow-ups as and when needed

Travel support in terms of scheduling meetings, reservations, hotels, for the IP team and associated activities as and when needed

Ability to work proactively and individually with patent offices for all pending / delayed action items and communicate (written and oral) effectively with patent office with minimal or no assistance from counsel

Educational Qualification

Bachelor's degree and /or paralegal certificate required with at least 1-2 years of core patent paralegal experience

Degree or certificate on patent laws

Experience in facilitating patenting process including forms, fees, and time lines for various activities

Proficiency in MS Office, especially Microsoft Word, Excel and PowerPoint

Experience with data management systems such as Anaqua, Memotech preferred

Other Qualifications

Excellent docketing skills (online & offline)

Self-sufficiency and proven capability of high-quality, high-volume delivery in minimal supervision

Highly organized, proactive and can prioritize among many competing work demands

Must have ability to multi-task, manage multiple priorities and deliver results in fast-paced environment

Strong oral and written communication and collaboration skills

Strong interpersonal skills

Willing to work towards closure / filing of cases within due dates.

PARALEGAL