Merck Manager, Patent Prosecution in Rahway, New Jersey
We partner with the business to ensure we maintain our company’s values and high ethical standards, comply with the law, protect our people and enhance our reputation. We strive to foster an environment that is inspiring, supportive and diverse.
The Office of General Counsel currently has an opening for a Manager, Patent Prosecution Support, to manage approximately six (6) paralegals providing support for global patent prosecution to patent attorneys within its Intellectual Property Group (“IP Group”). This position is located in Rahway, NJ.
A successful candidate should possess strong management skills, exceptional oral and written communication skills, be self-motivated and excel in a team environment. This position is responsible for managing and training multiple paralegals in their support of patent attorneys in global patent prosecution, developing best practices for the paralegals that advance the larger IP organization, managing department prosecution spend with the USPTO, and additional responsibilities in support of global patent legal operations. The candidate should also have a demonstrated capacity to manage and prioritize multiple tasks efficiently in a high-volume environment in order to meet deadlines on a timely basis.
Job responsibilities include, but are not limited to:
Direct, manage and supervise the work of patent prosecution paralegals, including providing coaching and advice on administrative IP issues and reviewing, as necessary, paralegal work product for completion and accuracy.
Provide guidance and troubleshoot US and foreign patent filing and prosecution issues as identified by staff and attorneys.
Take necessary action to ensure adequate patent paralegal coverage at all times; and monitor workloads across the patent paralegal group to resolve workload distribution problems to ensure appropriate workload balance.
Assist with overflow work by identifying additional resources and pitching in as necessary.
Generate statistical and other requested reports on an ad hoc basis, for example, a list of key “drop dead” actions, and paralegal and attorney workload reports.
Strategize talent management for the paralegal team; drive the recruitment, training and on-boarding of new patent prosecution paralegals; ensure appropriate staffing in terms of both quantity and skill levels; devise and execute training plans to ensure that all patent prosecution paralegals have adequate skills to support the prosecution of small and large molecule and vaccine patent applications; when appropriate, expand professional development opportunities for the patent prosecution paralegals to include supervisory responsibility to enable them to assist with some aspects of managing, mentoring, training and cross-training the team.
Work with the Director of IP Administration and other patent support staff managers to maximize and encourage cross team cooperation in the functional areas of responsibility.
Participate in internal review committees and assist with formality reviews.
Participate in departmental patent practice committees to ensure all filing and prosecution issues are streamlined and up to date.
Supervise updates to internal patent prosecution procedures to assure compliance with USPTO rule changes and departmental patent practice committee recommendations.
Assist attorneys in gathering information for internal requests for patent information associated with product candidates/products.
Monitor USPTO deposit account spend, replenishment and monthly reconciliation.
Monitor US e-filed Application mailbox; ensure prompt submission of filed items to the IP Group docketing team.
A successful candidate may also be called upon to assist with other duties and special projects within the team/IP Group. The successful candidate must have the ability to prioritize work from multiple sources and originators, exercise a high level of discretion with confidential information, operate independently, exercise good judgment and take initiative. Excellent attention to detail, computer skills, professional communication and interpersonal skills, flexibility and teamwork are a must.
- Associates degree, Paralegal certificate or equivalent preferred, but extensive experience in patent legal support will be considered.
Required Experience and Skills:
Minimum of ten (10) years patent work experience in a law firm or in-house legal department.
Experience assisting with international patent prosecution, including proven experience and deep understanding of USPTO rules, laws and procedures (e.g., Code of Federal Regulations (Title 37); Manual of Patent Examining Procedure), and use of the USPTO’s Electronic Filing System and electronic forms.
Proficiency with all aspects of the job responsibilities for “Paralegal, Patent Prosecution Support” position (concurrently posted).
Proven ability to mediate, reconcile different viewpoints and clearly convey industry and departmental views and standards.
Strong leadership and communication skills to work with individuals at all levels within the organization.
Strong computer skills, with an advanced proficiency with MS Office Suite (Outlook, Word, Excel and SharePoint) and Adobe Acrobat Pro.
Experience analyzing data and preparing management reports.
Ability to handle and prioritize a large number of simultaneous assignments.
Documented experience as a strong performer in current and past positions.
Ability to exercise initiative, flexibility, tact and independent judgment.
Enthusiastic, self-motivated team player with a strong work ethic.
Preferred Experience and Skills:
Experience managing IP administrative professionals
Patent paralegal experience supporting pharmaceutical or biotechnology patent prosecution
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Who we are …
Merck & Co., Inc., Kenilworth, New Jersey, USA is known as “Merck” in the United States, Canada & Puerto Rico. We are known as “MSD” in Europe, Middle East, Africa, Latin America & Asia Pacific. We are a global biopharmaceutical leader with a diverse portfolio of prescription medicines, oncology, vaccines and animal health products.
We are driven by our purpose to develop and deliver innovative products that save and improve lives. With 69,000 employees operating in more than 140 countries, we offer state of the art laboratories, plants and offices that are designed to Inspire our employees as we learn, develop and grow in our careers. We are proud of our 125 years of service to humanity and continue to be one of the world’s biggest investors in Research & Development.
What we look for …
In a world of rapid innovation, we seek brave Inventors who want to make an Impact in all aspects of our business, enabling breakthroughs that will affect generations to come. We encourage you to bring your disruptive thinking, collaborative spirit and diverse perspective to our organization. Together we will continue Inventing For Life, Impacting Lives while Inspiring Your Career Growth .
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Requisition ID: R37027
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