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IP Paralegal III

Company: Bristol Myers Squibb
Location: Cambridge
Posted on: November 24, 2022

Job Description:

At Bristol Myers Squibb, we are inspired by a single vision - transforming patients' lives through science. -In oncology, hematology, immunology and cardiovascular disease - and one of the most diverse and promising pipelines in the industry - each of our passionate colleagues contribute to innovations that drive meaningful change. We bring a human touch to every treatment we pioneer. Join us and make a difference.

Paralegal Responsibilities
Advanced knowledge of US and foreign patent procedures

Monitors progress of patent cases and patent attorney/agent dockets through use of USPTO Private PAIR, IP Management Software and Document Management System and seeks to reconcile any noted discrepancies

Demonstrated efficient workload prioritization including the ability to efficiently manage multiple heavy dockets, multiple tasks, and e-mail workload including outside counsel e-mail review

Reviews patent application files to check for compliance with USPTO requirements and BMS department standards, takes initiative to resolve discrepancies

Reviews correspondence received from U.S. outside counsel law firms and expertly liaises with agents to ensure they are in compliance with BMS processes and procedures and USPTO rules and provides them with instructions and guidance in order to meet compliance

Expert knowledge and working experience of the USPTO EFS web filing system in order to independently draft and prepare simple to moderately complex patent legal documents for submission to the USPTO including (but not limited to) patent applications, figures, sequence listings, amendments, information disclosure statements, office action responses, requests for continued examination, notices of appeal, reply briefs, Allowance Checklists, Allowed Claims, issue fee payments, etc.

Knowledge and expertise to customize/suggest language changes on forms as applicable to specific patent prosecution need

Identifies patent legal issues and/or problems based on knowledge of PTO procedures and suggests and/or takes initiative to resolve

Advanced skills to independently draft and assist with attorney responses to worldwide foreign patent agents

Expert use and application of the Code of Federal Regulations (Title 37) and the Manual of Patent Examining Procedure (MPEP) to enable ability to identify legal issues/problems based on knowledge of PTO procedures

Proficiently performs Patent Term Adjustment review and analysis and delivery of analysis summary to patent attorney/agent and independently drafts petitions for PTA reconsideration.

Participates in best practice group meetings in order to provide input and feedback to promote consistent administrative procedures

Liaises with docketing group by providing guidance on USPTO prosecution as it pertains to deadlines and workflows that impact the paralegal group

Advanced oral, writing, and communication skills including procedural document writing skills

Excellent organizational and accountability skills, takes initiative to follow up with inventors, counsel and agents to meet critical deadline dates

Sets own standards of high performance and works to exceed standards; takes initiative to expand own knowledge of PTO rules.

Assists with onboarding and mentoring legal assistants and paralegals

Frequently provides backup and support to legal assistants and paralegals.

Demonstrated track record and valued resource to management

Expert knowledge of Microsoft Office 2013 including Outlook, Word, Excel

Advanced knowledge of IP Management Software and Document Management Software

Advanced form editing capability in Adobe Acrobat Pro

Advanced proficiency in use of basic to advanced forms including IP Management Software generated forms.

Strong skills and experience with Patent-In software to generate sequence listings.

Proficient knowledge and use of domestic and foreign patent databases, e.g., PCT Scope; EPO Online, etc.

Advanced reference management proficiency including searching, procurement of patent references (U.S. and Foreign patents, journal articles) and familiarity with reference linking within IP management software or document management system.

Advanced edit capability in Chemdraw

Ability to quickly learn and adapt to new software, processes and workflows in order to perform efficiently and provide key feedback to assist team members to maximize efficiency

Timely and efficient communicator with patent attorneys/agents, outside counsel firms, team members, cross-functional groups and stakeholders

Process and reconcile expense reports

Experienced and organized travel arranger

Organizes small and large group meetings for attorneys/agents including meeting agenda and meeting minutes preparation

Consistently seeks out opportunities to provide support when there are gaps in coverage.

Bachelor's Degree or equivalent experience which is defined as 4 years of legal work experience above the minimum work experience required for the role. 10+ years of work experience or Paralegal Certificate and 8+ years of work experience in a law firm, an in-house legal department, a consulting firm, or comparable experience elsewhere.
Around the world, we are passionate about making an impact on the lives of patients with serious diseases. Empowered to apply our individual talents and diverse perspectives in an inclusive culture, our shared values of passion, innovation, urgency, accountability, inclusion and integrity bring out the highest potential of each of our colleagues.

Bristol Myers Squibb recognizes the importance of balance and flexibility in our work environment. We offer a wide variety of competitive benefits, services and programs that provide our employees with the resources to pursue their goals, both at work and in their personal lives.

Physical presence at the BMS worksite or physical presence in the field is an essential job function of this role which the Company deems critical to collaboration, innovation, productivity, employee well-being and engagement, and enhances the Company culture.

To protect the safety of our workforce, customers, patients and communities, the policy of the Company requires all employees and workers in the U.S. and Puerto Rico to be fully vaccinated against COVID-19, unless they have received an exception based on an approved request for a medical or religious reasonable accommodation. - Therefore, all BMS applicants seeking a role located in the U.S. and Puerto Rico must confirm that they have already received or are willing to receive the full COVID-19 vaccination by their start date as a qualification of the role and condition of employment. - This requirement is subject to state and local law restrictions and may not be applicable to employees working in certain jurisdictions such as Montana. This requirement is also subject to discussions with collective bargaining representatives in the U.S.

Our company is committed to ensuring that people with disabilities can excel through a transparent recruitment process, reasonable workplace adjustments and ongoing support in their roles. Applicants can request an approval of accommodation prior to accepting a job offer. If you require reasonable accommodation in completing this application or if you are applying to a role based in the U.S. or Puerto Rico and you believe that you are unable to receive a COVID-19 vaccine due to a medical condition or sincerely held religious belief, during or any part of the recruitment process, please direct your inquiries to . Visit to access our complete Equal Employment Opportunity statement.

BMS will consider for employment qualified applicants with arrest and conviction records, pursuant to applicable laws in your area.

Any data processed in connection with role applications will be treated in accordance with applicable data privacy policies and regulations.

Keywords: Bristol Myers Squibb, Cambridge , IP Paralegal III, Legal , Cambridge, Massachusetts

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