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.
